Introduction

This case presented before the Calcutta High Court is a comprehensive intellectual property dispute involving allegations of trademark infringement, copyright infringement, passing off, and trafficking in trademark rights. The plaintiff, ITC Limited, a dominant and long-standing player in the Indian tobacco industry, alleged that the defendants, including Pravin Kumar and associated entities, were engaged in manufacturing and distributing counterfeit cigarettes under the brand name “GOLD STAG” that bore deceptive similarity to ITC’s well-known cigarette brand “GOLD FLAKE.”

The central legal question revolved around the extent to which a company can claim proprietary rights over a composite mark containing a laudatory expression like “GOLD” and whether the defendants’ packaging constituted infringement or passing off.

Factual Background

ITC Limited is a multinational conglomerate with a substantial presence in the manufacture and sale of cigarettes in India under the brand “GOLD FLAKE,” a trademark that it has allegedly used uninterruptedly since 1905. The plaintiff possesses numerous trademark and copyright registrations in India for marks such as “GOLD FLAKE Hallmark,” “GOLD FLAKE Ultima,” “GOLD FLAKE Century,” and “GOLD FLAKE Super Star.”

The petitioner claims that the “GOLD FLAKE” mark and its associated trade dress, including the red and gold color combination, device marks, and packaging format, have become distinctive identifiers of its products.

In late 2024, ITC discovered the marketing and sale of cigarettes under the brand “IJM GOLD STAG” by the defendants. The packaging of “GOLD STAG” cigarettes bore a striking resemblance to that of “GOLD FLAKE,” employing similar colors, layout, typography, and even similar roundel devices. ITC contended that the use of the word “GOLD” and the replication of packaging elements by the defendants constituted infringement of their registered trademarks and copyright, passing off, and intentional counterfeiting.

Procedural Background

Upon discovery of the infringing activity, ITC filed the suit on 28 January 2025 under the Commercial Courts Act, 2015. The High Court initially passed an ad-interim order on 6 February 2025 and appointed Special Officers for site inspections.

The defendants filed applications under GA-COM/2/2025 for vacating the interim injunction, and under GA-COM/4/2025 for revocation of dispensation under Section 12A of the Commercial Courts Act on the ground that pre-institution mediation was bypassed without just cause. All applications were heard analogously.

Legal Issues

The primary legal issues before the court were whether the defendants’ use of the mark “GOLD STAG” and its associated packaging infringed upon ITC’s registered trademarks and copyrighted artistic work, and whether the plaintiff’s claim of urgency justified bypassing the mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.

Ancillary issues involved whether the use of the word “GOLD” could be monopolized and whether the defendants’ registration of “GOLD STAG” provided them any protection against such infringement claims.

Discussion on Judgments

In support of its arguments, the plaintiff relied on multiple judicial precedents that recognized the distinctiveness of the “GOLD FLAKE” mark and the protection available under both trademark and copyright laws for packaging and trade dress.

In ITC Limited v. Golden Tobacco Limited, 2018 SCC OnLine Mad 2437, the Madras High Court acknowledged the long-standing reputation of “GOLD FLAKE” and restrained the use of similar marks. Similarly, in ITC Ltd. v. NTC Industries Ltd., 2015 (64) PTC 244 (Bom), the Bombay High Court granted injunctive relief to ITC against the use of deceptively similar marks by rival businesses.

The Calcutta High Court itself had previously restrained parties from using variants like “GOLD STEP,” “GOLD FROST,” “GOLD FLICKER,” and “GOLD VIMAL” in various suits such as CS(COMM) No. 124/2024 and CS(COMM) No. 60/2024, recognizing the deceptive similarity and likelihood of confusion.

The court also cited the landmark decision in Parakh Vanijya Pvt. Ltd. v. Baroma Agro Product, (2018) 16 SCC 632, which emphasized that claims of secondary meaning and exclusivity over common or descriptive terms require careful scrutiny.

For assessing the maintainability of suit without pre-institution mediation, the court referred to Patil Automation (P) Ltd. v. Rakheja Engineers (P) Ltd., (2022) 10 SCC 1, and Yamini Manohar v. T.K.D. Keerthi, 2023 SCC OnLine SC 1382.

These decisions collectively held that mediation is mandatory unless the suit seeks urgent interim relief and the urgency is not falsely pleaded. The court emphasized that it is for the court, not the plaintiff, to determine the urgency’s authenticity.

On the procedural side, the court relied on Autodesk Inc. v. A.V.T. Shankardass, (2008) 105 DRJ 188, and Time Warner Entertainment v. RPG Netcom, 2007 (34) PTC 668 (Del), to uphold the procedural validity of executing search-and-seizure orders before formal service under Order 39 Rule 3 CPC.

Reasoning and Analysis

Justice Ravi Krishan Kapur held that the plaintiff made out a strong prima facie case for grant of interim relief. The court accepted that the plaintiff’s mark “GOLD FLAKE” had acquired distinctiveness through continuous and extensive use over decades.

While acknowledging that “GOLD” is a laudatory term, the court emphasized that the overall packaging, trade dress, and visual similarities could not be ignored. The red and gold color scheme, the use of similar roundel devices, and the layout of product elements gave the impugned product an appearance deceptively similar to that of the plaintiff’s.

The judge rejected the defendant’s argument that ITC had no exclusive right over the word “GOLD” alone, stating that while “GOLD” per se may be descriptive or laudatory, its use in conjunction with deceptive packaging and overall presentation constituted actionable infringement and passing off.

On the issue of bypassing Section 12A, the court held that ITC had pleaded sufficient urgency. There was no evidence that ITC had prior knowledge of the infringing acts before December 2024.

The court also noted the complex corporate structure and concealed relationships among the defendants which justified ITC’s prompt approach to court. The court distinguished this case from others where urgency was found to be a guise.

Additionally, the court found the licensing agreements submitted by the defendants to be suspect, noting discrepancies in the documents and the absence of valid assignments or written authorizations as mandated under Sections 30 and 19 of the Copyright Act, 1957.

Final Decision

The Calcutta High Court upheld the ad-interim injunction previously granted and allowed ITC’s application for interim relief. It dismissed the applications by the defendants seeking to vacate the injunction and revoke the dispensation under Section 12A of the Commercial Courts Act.

The court restrained the defendants from using the impugned mark “GOLD STAG” or any deceptively similar trade dress, packaging, or devices in relation to cigarettes. The court also noted that the acts of the defendants warranted further scrutiny at trial to examine claims of counterfeiting and trafficking.

Law Settled in This Case

This case reinforces the principle that even descriptive or laudatory components of a composite trademark may attain distinctiveness when used extensively over a long period, and such acquired distinctiveness can be protected under trademark and copyright laws.

The judgment clarifies that trade dress and packaging play a crucial role in consumer perception and can independently ground claims of infringement and passing off.

Furthermore, the court reiterated that bypassing the requirement of pre-institution mediation under Section 12A of the Commercial Courts Act is permissible only when genuine urgency exists, and the courts are the ultimate arbiters of such urgency.