Calcutta High Court Upholds Interim Injunction Protecting ITC’s “Gold Flake” Against “IJM Gold Stag” Cigarettes

The Calcutta High Court, in Pravin Kumar vs. ITC Limited & Ors., upheld the interim injunction granted in favour of ITC Limited in a trade mark and trade dress dispute involving its cigarette brand “Gold Flake” and the defendants’ “IJM Gold Stag” cigarettes. The Division Bench held that the suit was maintainable despite objections concerning territorial jurisdiction and competing trade mark registrations. It further observed that the word “Gold” had prima facie acquired secondary meaning in association with ITC’s products through extensive and continuous use. The Court found sufficient similarity between the competing marks and their overall presentation to sustain the interim protection granted by the Single Judge.

Facts of the Case

ITC Limited instituted a suit alleging infringement of its registered trademarks and trade dress, along with passing off, arising from the defendants’ use of the mark “IJM Gold Stag” and its associated packaging. The Single Judge dismissed the application seeking vacation of the interim injunction and granted temporary protection in favour of ITC, primarily on the ground of passing off, while also granting relief concerning infringement.

Aggrieved by the order, Pravin Kumar, Defendant No. 1, preferred an appeal before the Division Bench. ITC also filed a cross-objection challenging the refusal of separate relief on the ground of infringement.

The appellant contended, inter alia, that the Calcutta High Court lacked territorial jurisdiction, that an infringement action could not be maintained against a registered proprietor of an identical or similar mark, and that ITC could not claim exclusivity over the word “Gold”, which had allegedly been disclaimed in certain trade mark registrations. The appellant further disputed the similarity between the competing packaging and challenged ITC’s copyright claims.

Issue before the Court

The principal issues before the Court were whether the Calcutta High Court had jurisdiction to entertain the suit; whether an infringement action could be maintained in the presence of competing trade mark registrations; whether the appellant had established a valid right to use the impugned mark; whether ITC could assert rights in the word “Gold”; and whether the competing marks and trade dress were sufficiently similar to justify interim protection against infringement and passing off.

Findings of the Court

Territorial jurisdiction and maintainability: The Court distinguished Clauses 12 and 14 of the Letters Patent, holding that Clause 12 concerns the Court’s original jurisdiction where the cause of action arises wholly or in part within its territorial limits, whereas Clause 14 concerns the joinder of distinct causes of action. Unlike Clause 12, Clause 14 does not require prior leave before the suit can be entertained or interim orders passed. The Court noted that leave under Clause 12 had been granted and that a show-cause notice under Clause 14 had been issued, which the appellant had failed to contest. It also held that Sections 134(2) of the Trade Marks Act, 1999 and 62(2) of the Copyright Act, 1957 supported jurisdiction, given ITC’s registered head office in Kolkata.

Competing registrations and alleged licence: The Court clarified that Sections 28 to 30 of the Trade Marks Act do not, by themselves, bar the institution of a suit or the grant of interlocutory relief where the validity of a competing registration is disputed. Section 124 permits such disputes to be addressed through rectification proceedings while preserving the Court’s power to grant interim protection under Section 124(5). The Court also found substantial questions concerning the validity of the appellant’s claimed permitted use, including inconsistencies in the licence documents, the timing of the alleged permission and the supporting royalty records.

Rights in the word “Gold”: The Court held that the alleged disclaimer did not conclusively defeat ITC’s claim at the interim stage. It noted that the disclaimer appeared in relation to only one registration, while other registrations did not contain the same restriction. Considering ITC’s pleaded history of extensive and continuous use since 1905, together with previous judicial recognition of the mark’s association with ITC, the Court found a prima facie case that “Gold” had acquired secondary meaning in relation to its products.

Similarity and likelihood of confusion: The Court rejected the argument that the statutory health warnings covering 85% of cigarette packaging should be excluded from the comparison. It held that the overall presentation must be considered from the perspective of an ordinary purchaser, who encounters the cigarette packet as a whole. The limited space available for the distinctive branding could heighten the likelihood of confusion. The Court found sufficient visual similarity between the competing marks and held that differences in price or individual design elements did not eliminate the possibility of deception. Accordingly, the Single Judge’s conclusion was a plausible one and disclosed no error warranting appellate interference.

Held

The Division Bench dismissed the appeal, affirming the interim injunction granted by the Single Judge. It also dismissed ITC’s cross-objection, holding that the impugned order already afforded protection in respect of infringement of its registered trademarks and trade dress. The Court found a sufficient prima facie case of infringement and passing off to justify the continuation of interim relief.

Conclusion

The decision reiterates that competing trade mark registrations do not automatically foreclose infringement proceedings where the validity of a registration is disputed, and that passing off remains independently actionable. It also underscores the importance of assessing the overall commercial impression of a product’s packaging and recognising the possibility that a common or descriptive word may acquire secondary meaning through sustained use. The findings remain at the interim stage and do not constitute a final determination of the parties’ rights after trial.

Last Updated on 16 October, 2026