Delhi High Court Protects 'Gold Flake' Mark Against Lookalike 'Gold Flame' and 'Gold Fighter' Cigarettes

The Delhi High Court on Monday confirmed a temperory injunction restraining Pelican Tobacco Co. Ltd. from manufacturing or selling its “Gold Flame” and “Gold Fighter” cigarettes, holding that their packaging and marks were deceptively similar to ITC Limited's well-known “Gold Flake” brand. A single bench of Justice Tejas Karia, in a judgment delivered on November 24, said Pelican had copied the essential features of ITC's packaging and that this was a clear case of triple identity, where the marks, products and consumer base were identical. It noted that ITC has sold cigarettes under the “Gold Flake” mark for more than a century. ITC alleged that Pelican adopted confusingly similar names (Gold flame and Gold fighter) and trade dress. In March 2024, the court granted an ex parte interim injunction in ITC's favour. ITC argued that an ordinary consumer would mistake Pelican's products for its own, since the rival packaging replicated all core elements. It submitted that the change from “Flake” to “Flame” was only a minor variation that did not reduce the likelihood of confusion. Pelican claimed that ITC was trying to monopolise the word “Gold”. It argued that cigarette buyers are brand conscious and that its packaging was different. Pelican also said ITC's rising sales demonstrated that there was no real loss. The court rejected these submissions. It held that “Gold Flake” had acquired strong reputation and secondary meaning in the cigarette market through long and extensive use. The court found the similarity close enough to mislead an average buyer. “Further the test of confusion is to be seen from the perspective of an average person with imperfect recollection getting confused and in view of the Plaintiff's Marks and the Impugned Marks being almost identical, any ordinary person would get confused and would not be able to distinguish between the Plaintiff's Marks and the Impugned Marks.”, the Court said.The Court stressed that even momentary confusion before purchase is enough to constitute infringement. Explaining the test of Initial Interest Confusion, it observed- “The initial interest confusion test proceeds on the principle that confusion in the minds of consumers may arise at the preliminary stage, prior to the actual purchase being completed. At the point of finalising the transaction, the consumer may no longer be in doubt as to the true origin of the goods or services. Nonetheless, even such transient confusion at the initial stage is sufficient to meet the requirement of deceptive similarity under Section 29 of the Trade Marks Act. The infringer's objective may be served merely by diverting the consumer's initial attention.”Consequently, the court held that Pelican had provided no credible explanation for adopting the disputed marks and described the adoption as “prima facie dishonest”. Finding that ITC had made out a strong case for protection, It confirmed the injunction until final disposal of the suit. Case Title: ITC Limited v. Pelican Tobacco Co Ltd & Ors.Citation: 2025 LiveLaw (Del) 1582 Case Number: CS(COMM) 221/2024 For Plaintiff: Senior Advocates Arvind Nigam and Arvind Nayar with Advocates Mamta Rani Jha, Shruttima Ehersa, Aiswarya Debdarshini, Agnish Aditya, Akshay Joshi and Sanyukta Kaushik For Defendant: Advocates Sanjeev Bindal, Bharat Gupta, Krishna Nagri and G.S. Singh Click Here To Read/Download Order

Delhi High Court Protects 'Gold Flake' Mark Against Lookalike 'Gold Flame' and 'Gold Fighter' Cigarettes

Ayushi Shukla

Tags