PRAVIN KUMAR vs ITC LIMITED AND ORS
- Court
- Calcutta High Court
In the High Court at Calcutta
Civil Appellate Jurisdiction
ORIGINAL SIDE
The Hon’ble Mr. Justice Sabyasachi Bhattacharyya
And
The Hon’ble Mr. Justice Supratim Bhattacharya
TEMPAPO-IPD NO. 6 OF 2025
IA NO: GA-COM 2 OF 2026
PRAVIN KUMAR
VS
ITC LIMITED AND ORS
OCOT NO. 7 OF 2025
PRAVIN KUMAR
VS
ITC LIMITED AND ORS
For the appellant : Mr. Tilak Kumar Bose, Sr. Adv.,
Mr. Soumya Ray Choudhury, Adv.,
Ms. Srishti Kaul, Adv.,
Mr. Suryaneel Das, Adv.,
Mr. Dhruv Chadha, Adv.,
Mr. Subha Pathak, Adv.,
Mr. Chiranjit Paul, Adv.,
Ms. Oindrila Ghosal, Adv.
For the respondents : Mr. S.N. Mukherjee, Sr. Adv.,
Mr. Paritosh Sinha, Adv.,
Mr. K.K. Pandey, Adv.,
Mr. Monosij Mukherjee, Adv.,
Mr. Sauradip Banerjee, Adv.,
Mr. Ayush Sinha, Adv.,
Mr. Naman Chowdhury, Adv.,
Mr. Bhavesh Garodia, Adv.,
Mr. Viraj Nandy, Adv.,
Ms. Sonia Nandy, Adv.,
Ms. Sayani De, Adv.
Heard on : 18.02.2026, 25.02.2026, 18.03.2026,
01.04.2026, 08.04.2026, 24.06.2026,
01.07.2026, 15.07.2026 & 22.07.2026
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Reserved on : 22.07.2026
Judgment on : 18.09.2026
Sabyasachi Bhattacharyya, J.:-
1. The present appeal arises out of a suit filed by the plaintiff/respondent no.1
seeking injunction against the defendant no.1/appellant and the other
defendants, being the rest of the respondents herein, in respect of alleged
infringement of the trade mark and trade dress of the plaintiff in respect of
its cigarette brand “Gold Flake”, as well as of alleged passing off of the said
trade name as well as trade dress of the plaintiff by the defendants by way of
user of the trade name “IJM Gold Stag” and the associated trade dress.
2. By the impugned order, the learned Single Judge dismissed a vacating
application of the defendant no.1/appellant and partially allowed the
temporary injunction application filed by the respondents, thereby granting
injunction primarily on account of passing off.
3. A cross-objection has been filed by the plaintiff/respondent no.1 against the
part of the impugned order whereby injunction on account of infringement
was refused.
4. As an aside, it is noted that after the matter was assigned to this Bench, the
appellant placed before this Court an order of the Hon’ble Supreme Court
passed in Writ Petition (Civil) No. 1273 of 2025 on January 23, 2026,
recording a request to this Court to dispose of the appeal within six months.
Accordingly, the hearing was commenced on the very next available date
thereafter. However, extensive arguments were advanced and several
judgments were cited by both parties, which culminated in elaborate written
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notes of arguments being filed by both sides, totalling between themselves
about 97 pages. The arguments were concluded on July 22, 2026, which
itself was beyond the stipulated period of six months. The above
circumstances led to the time-line stipulated by the Hon’ble Supreme Court
being exceeded.
5. Learned senior counsel for the defendant no.1/appellant, in support of the
appeal, argues that the learned Single Judge lacked inherent jurisdiction to
entertain the suit and to pass the impugned order. It is pointed out that the
alleged infringement/passing off occurred in the State of Punjab, which is
beyond the territorial jurisdiction of this Court. The addresses of the
defendants are in Punjab and the business of the defendants is also
conducted in Punjab, and not in Kolkata. Thus, in the absence of any leave
under Clause 14 of the Letters Patent for the High Court of Judicature at
Fort William in Bengal (herein after referred to as “the Letters Patent”), no
injunction could be granted. Learned senior counsel points out that
although a leave under Clause 14 may be obtained subsequent to the filing
of the suit, no interim relief can be granted before such leave is actually
granted.
6. Learned senior counsel cites the judgment passed in Hindustan Unilever
Limited v. Three Leaves India Pvt. Ltd. , reported at 2016 SCC OnLine Cal
11151 , which, it is submitted, was affirmed in APOT 214 of 2016 on July
20, 2026, in support of the proposition that no injunction can be granted
where the action is of passing off, combined with infringement, without a
Clause 14 leave.
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7. The appellant also cites Asma Lateef and another v. Shabbir Ahmad and
others , reported at (2024) 4 SCC 696 , where the Hon’ble Supreme Court held
that where an objection as to maintainability/jurisdiction is raised, the
same is to be determined at least prima facie before granting interlocutory
relief.
8. In the present case, it is submitted, the cause of action arose beyond the
jurisdiction of this Court and the defendants carry on their business only in
Punjab, which is beyond the jurisdiction of this Court as well, thus
denuding the Calcutta High Court of jurisdiction, which extends beyond
territoriality and enters into the domain of subject-matter jurisdiction. It is
submitted that, Section 134(2) of the Trade Marks Act (for short, “the TM
Act”) does not apply to passing off. Furthermore, the said provision merely
creates an additional forum for the benefit of the proprietor and does not
vest unrestricted power on a Court not otherwise having jurisdiction to
assume so wherever the proprietor has office. It is contended that since the
plaintiff/respondent no.1 also has business in Punjab and has offices for
such purpose within Punjab, the learned Single Judge erred in law in
assuming jurisdiction. Leave under Clause 1t of the Letters Patent, it is
submitted, was also specifically required to be granted.
9. Learned senior counsel for the appellants cites Indian Performing Rights
Society Ltd. v. Sanjay Dalia and another , reported at (2015) 10 SCC 161 ,
where it was held that if the plaintiff carries on business at a place where
the cause of action has arisen, the suit must be instituted there, not another
place merely because the plaintiff maintains an office there. A suit of
composite nature does not permit the Court to entertain a cause of action
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without having territorial jurisdiction. It was reiterated that Section 62(2) of
the Copyright Act, 1957 (hereinafter referred to as “CR Act”) and Section
134(2) of the TM Act are merely to alleviate the proprietor’s hardship, not to
facilitate forum shopping or to create inconvenience for the defendant.
10. Next relying on Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar
Chaubey , reported at 2016 SCC OnLine Del 376 , it is argued that when the
principal office of the plaintiff is elsewhere but the plaintiff still has a
subordinate establishment where the cause of action arises, the Courts at
the latter place can invoke jurisdiction.
11. It is further contended that since the lack of jurisdiction pertains not only to
territoriality but also to inherent jurisdiction, no specific objection was
required to be taken at the inception before the learned Trial Judge.
12.
Learned senior counsel appearing for the appellant next submits that there
cannot be any infringement action against another user of identical or
deceptively similar registered trade mark. By placing particular reliance on
Section 28(3) and Section 30(2)(e) of the TM Act, it is argued that one
registered proprietor cannot sue another for infringement. In this context, it
is submitted that the impugned trade mark “IJM Gold Stag” is duly
registered, having Registration No. 2331406 (Class 34) dated May 11, 2012,
which has since been renewed and is still subsisting.
13. In support of the above proposition, learned senior counsel cites S. Syed
Mohideen v. P. Sulochana Bai , reported at (2016) 2 SCC 683 , and an
unreported judgment of the Delhi High Court in M/s. Vaidya Rishi India
dated August 7, 2025,
Private Limited & Anr. v. Suresh Dutt Parashar & Ors.
passed in FAO (COMM) 122/2024 .
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14. It is contended that Section 124 of the TM Act contemplates certain
situations where a suit for infringement may be instituted against a
registered proprietor of a trade mark and injunction may also be granted
under certain circumstances, where the issue of invalidity of the defendant’s
trade mark is raised by the plaintiff. However, in the present case, it is
submitted, no such case has been made out in the plaint or the temporary
injunction application. Furthermore, for such a suit to be maintainable, the
Court must be satisfied as to the invalidity of the defendant’s trade mark
and such validity is to be determined in a rectification application. In the
present case, the said tests are not satisfied.
15. The defendant no.1/appellant, it is argued, has written permission from the
registered proprietor, which would be evident from the documents produced
before the learned Single Judge. Moreover, the learned Single Judge himself
held in the impugned order that the defendants have common directors and
operate as a single economic entity. Thus, the use of the impugned trade
mark by its registered/licensed users could not be assailed in the suit by
another alleged registered proprietor.
16. Thirdly, it is argued that the premise of purported similarity between the two
marks is the word “Gold” which is common to thee marks of both parties.
However, the plaintiff specifically disclaimed the same while making
applications for registration of its various trade marks, which is evident from
the official portal of the Trade Mark Registry. Moreover, the
plaintiff/respondent no.1 has registration for composite marks, labels and
devices, containing the expression “Gold”, without having any separate
registration for the term “Gold”, which is otherwise a generic laudatory word.
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No secondary meaning of the said word, exclusive to the plaintiff, has been
established. Under sub-sections (1) and (2) of Section 17 of the TM Act, a
mark is to be considered as a whole unless there are separate applications
for registration of its parts. Consumer knowledge, it is submitted, is
immaterial to ascertain the legal effect of a disclaimer.
17. It is next submitted that since the registrations of its marks were obtained
by the plaintiff by denying exclusivity in the term “Gold” on public record, it
is debarred by the principle of Prosecution History Estoppel from taking a
contrary stand before the Court or any other forum. Learned senior counsel
cites PhonePe (P) Ltd. v. Resilient Innovations (P) Ltd. , reported at 2023 SCC
OnLine Bom 764 , for such proposition as well as Parakh Vanijya (P) Ltd. v.
Baroma Agro Product , reported at (2018) 16 SCC 632 , for the contention that
if there is a specific disclaimer, there cannot be an exclusive claim in respect
of the disclaimed word.
18. Three-N-Products Private Limited v. Emami Limited , reported at 2008 SCC
OnLine Cal 589 , is cited by the appellant for the proposition that a
proprietor cannot extract descriptive or common components from a
composite registered mark to obtain exclusivity in the same. Premlata v.
Naseeb Bee , reported at (2022) 6 SCC 585 , is relied on to contend that a
party cannot adopt an inconsistent position to obtain advantage after getting
benefit earlier on a contrary stand.
19. Raman Kwatra v. KEI Industries Ltd. , reported at 2023 SCC OnLine Del 38 , is
cited by the appellant for the proposition that an applicant for registration of
a trade mark cannot approbate something before the Trade Mark Registry
and reprobate the same in Court.
8
20. Learned senior counsel appearing for the appellant further cites Sudarshan
Seeds Pvt. Ltd. v. Vishal Krishi Products Pvt. Ltd. , reported at 2017 SCC
OnLine Cal 16310 , in support of the argument that a party is required to
accurately disclose the precise mark which is registered for getting
interlocutory protection.
21. In this context, learned senior counsel points out that although the plaintiff
has taken the plea that there is an application pending for rectification of
the recording of “Gold” as disclaimed, no order has still been passed thereon
and, as such, the word still remains disclaimed on the records. Moreover,
rectification has been sought only in respect of one mark whereas there are
disclaimers in respect of the word “Gold” in at least six of the registrations.
22. Fourthly, the appellant argues that no case of passing off, which was the
premise of the impugned order of injunction, has been made out by the
plaintiff. The only common element between the plaintiff’s product and the
defendants’ product is the word “Gold” which, in any event, is disclaimed by
the plaintiff and is laudatory in nature and common to the trade.
23. Moreover, there is no visual similarity between the trade marks and trade
dresses of the parties, which will be evident from a bare perusal of the said
trade marks/trade dresses.
24. Subtracting the word “Gold”, the plaintiff’s product would read “Flake”,
whereas that of the defendants’, “IJM” and “Stag”. Moreover, the plaintiff’s
product has a red roundel device/medallion on white background, which is
a part of a horizontal arrangement, whereas the defendants’ trade dress is in
prominent bold black letter across a vertical red ribbon and is not enclosed
within any roundel similar to the plaintiff’s trade dress.
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25. Whereas the plaintiff’s mark is in small block letters in conventional font,
that of the defendants is in large, bold and stylised mixed-case letters. The
accompanying expression of the plaintiff’s products is “Honeydew Blend”,
whereas that of the defendants is “Premium Quality”. The pre-dominant
colour combination in the plaintiff’s product is gold-brown as regards the
mark and a horizontally arranged descriptor, whereas that of the defendants
is pre-dominant yellow-gold, with a vertical red ribbon and a different
arrangement of rectangular elements.
26. Lastly, on overall visual effect, the plaintiff’s mark contains a roundel device
in the major part of the design whereas there is no such roundel device at
all in the defendants’ mark.
27. Moreover, the plaintiff does not have any registration of the colour
combination red and gold and therefore, cannot claim monopoly over the
use of the same.
28. Learned senior counsel for the appellant next submits that the governing
statute in the field is the Cigarettes and Other Tobacco Products (Prohibition
of Advertisement and Regulation of Trade and Commerce, Production,
Supply and Distribution) Act, 2003 (for short, “the COTPA”). As per the
same, the majority of the mark on the packaging of cigarettes and other
tobacco-related products (85%) has to contain a statutory image, which is
found in all cigarette packets in India.
29. The learned Single Judge, it is argued, took into account the said mandatory
85% of the image, which is common to all cigarette brands, to find similarity
between the two products, which amounts to perversity. For a proper
assessment of whether the two marks are deceptively similar or identical,
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only the part of the trade mark/trade dress other than the said 85%
statutory image was required to be taken into account, which was not done
in the present case.
30. Learned senior counsel cites ITC Limited v. Crescendo Tobacco Agency ,
reported at 2011 SCC OnLine Cal 518 , for the proposition that in passing off
and infringement actions, the overall presentation and likelihood of
misrepresentation as to trade origin is required to be ascertained.
1
31. In PhonePe (supra) , it is submitted, it was also held that when the common
portion of a mark is widely used, greater significance is to be attached to the
uncommon portion. Learned senior counsel also relies on Vikrant Chemico
Industries (P) Ltd. v. Shri Gopal Engineering & Chemical Works (P) Ltd.,
reported at 2025 SCC OnLine Del 5562 , where it was held that in such
actions, the overall get-up has to be cumulatively assessed. In Pernod Ricard
India (P) Ltd. v. Karanveer Singh Chhabra, 2025 , reported at SCC OnLine SC
1701 , it was held a generic/laudatory word cannot be removed and taken
separately from a composite setting in infringement/passing off actions.
32. The next contention of the appellants is that the plaintiff/respondent no. 1
does not have a subsisting copyright in its mark. It is the plaintiff’s case that
its label is historical, being in use since the year 1910. Under Section 22 of
the CR Act, copyright subsists for 60 years from the death of the author.
Here, no author has been identified and, as such, it is to be assumed that
such copyright ceased after the passage of 60 years from the year 1910.
33. The copyright certification produced by the plaintiff is of the years 2010 and
2011. However, an expired copyright cannot be revived and a later
1
PhonePe (P) Ltd. v. Resilient Innovations (P) Ltd. , reported at 2023 SCC OnLine Bom 764
11
adaptation/re-adaptation of an already expired copyright does not confer a
fresh copyright in the historical features.
34. Learned senior counsel refers to the bar stipulated in Section 15(2) of the CR
Act which provides that the copyright in any design which is capable of
being registered under the Designs Act, 2000 but has not been so registered,
shall cease as soon as any article in which the design has been reproduced
more than fifty times by an industrial process by the owner of the copyright
or, with his licence, by any other person.
35. Here, the claimed trade dress is covered by the Designs Act, 2000 but has
not been registered under the said Act. Since the mark/dress is being used
commercially since long, it has obviously exceeded the stipulated number of
users within the contemplation of Section 15(2) of the CR Act. The plaintiff’s
case is also based on the design, which has been sold separately for
consideration, thus attracting the bar indicated above.
36. Learned senior counsel cites Tejpal Yadav v. State , reported at 2015 SCC
OnLine Del 13429 to argue that there cannot be any design contained in
packaging.
37. On a John Doe Injunction granted by the learned Single Judge at the
inception, special officers were appointed, who apparently found
infringement in “some of the packs” of the defendant’s products. Such
packets were recovered in Punjab and the exact work alleged to have been
copied has not been identified.
38. It is further argued that the registration application for copyright is to be
accompanied by a certificate from the Registrar of Trade Marks, confirming
that there is no identical or deceptively similar registered trade mark. Such
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requirement is a mandate of law, which is evident from a composite reading
of Section 45(1) of the CR Act and Rule 70(6) of the Copyright Rules, 2013
(hereinafter referred to “the CR Rules”). There is not even any pleading as to
compliance of the said requirement. Learned senior counsel cites Mohd.
Ershad v. Registrar of Copyrights , reported at 2022 SCC OnLine Del 2815 , to
argue that such compliance is mandatory.
39. In reply, learned senior counsel appearing for the plaintiff/respondent no. 1
argues that no objection as to non-compliance of Clause 14 of the Letters
Patent was raised at any point of time before the learned Single Judge and
issue cannot be raised for the first time in appeal. Clause 14, it is
submitted, does not contemplate any “leave” but only a “notice”. Non-
compliance thereof does not pertain to inherent lack of jurisdiction.
Moreover, the defendant no. 1/appellant also participated in the proceeding.
Learned senior counsel cites Union of India v. Central Administrative
Tribunal, 2023 , reported at SCC OnLine Mad 371 , and Arvind Laboratories v.
Hahnemann Laboratory (P) Ltd. , reported at 2007 SCC OnLine Mad 1652 , in
support of the above contention.
2
40. As opposed to the facts in Hindustan Unilever Limited (supra) , in the instant
case, leave under Clause 14 of the Letters Patent has been expressly sought
by the plaintiff and show cause was issued on the same, despite which the
defendants have not shown any such cause. Thus, the said objection cannot
be raised here, since the defendants waived such objection by actively
participating in the interlocutory proceeding and opposing the injunction
2
Hindustan Unilever Limited v. Three Leaves India Pvt. Ltd. , reported at 2016 SCC OnLine Cal
11151
13
application. Even in the vacating application filed in the suit by the
defendant no. 1/appellant, including on the passing off component of the
matter, in support of which the appellant argued at length before the
learned Single Judge, such objection was not raised.
41. As admitted by the appellant and also held in Godfrey Phillips (India) Limited
v. I.T.C. Limited , reported at 2011 SCC OnLine Cal 1160 , leave under Clause
14 can be granted even at a subsequent stage.
42. Moreover, the reliefs sought in the suit are not restricted to passing off but
also relate to infringement of the trade mark and trade dress of the plaintiff,
which was also incorporated in prayers (c) and (e) of IP COM 12 of 2025, the
injunction application.
43. It is next submitted that even the objection as to territorial jurisdiction
under Clause 12 of the Letters Patent, which is to be taken at the earliest
possible opportunity, was not raised before the learned Single Judge, nor is
there any factual foundation of the appellant’s contention that the
plaintiff/respondent no. 1 has a subordinate office in Punjab. It is
contended that Section 134(2) of the TM Act has a non obstante provision
and the plaintiff admittedly has its registered office in Kolkata.
44. It is submitted that, by dint of Section 120 of the Code of Civil Procedure,
1908 (for short, “the Code”), the provisions of the Code, including Section 20
thereof, is not applicable in Original Side proceedings of this Court.
Moreover, in view of the present action being in the nature of a quia timet
action, real and credible apprehension of the impugned product being
marketed in West Bengal, including Kolkata, would suffice to grant interim
protection.
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45. Next moving on to the question of whether any suit for infringement/passing
off is maintainable against a registered proprietors/user, learned senior
counsel for the appellant/respondent no. 1 contends that such a suit is very
much maintainable within the scheme of Sections 28, 29, 30(32)(e), 31 and
124 of the TM Act. In support of such contention, learned senior counsel
relies on M/s. Apricot Foods Private Limited v. M/s. S. Narendra Kumar &
Co. , an unreported Division Bench Judgment of the Bombay High Court
dated December 21, 2013, in APPEAL (LODG) NO.378 OF 2013 .
46. Learned senior counsel takes the Court through the said provisions to
elaborate such point. It is argued that Section 28(1) makes the said
provision subject to other provisions of the Act and makes it applicable only
if the trade mark is valid. There is no bar to preferring a challenge even
against a purported registered proprietor if the defendant’s trade mark is
invalid, as contemplated in Section 28(3).
47. Under Section 30(2)(e), a trade mark cannot be said to be infringed if it is in
the exercise of a right to use the same. In the present case, the defendants
do not have a right to use the infringing trade mark and the said trade mark
is palpably invalid.
48. Moreover, under Section 31 of the TM Act, registration is only prima facie
evidence of validity of a trade mark and is not conclusive. Section 124, it is
argued, provides for different situations where a suit for infringement or
passing off by a registered user is to be stayed and, if no rectification
proceedings are pending, three months’ adjournment can be given after
framing of issues only if the court is satisfied as to the invalidity
prima facie
objection being tenable, in order to enable rectification in the register.
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49. It is argued that in the present case the trade mark of the alleged registered
proprietor, defendant/respondent no. 4, is invalid and is wrongly on the
register, which has been categorically pleaded in paragraph no. 35 of the
plaint. The time for filing written statement lapsed on December 18, 2025,
after 120 days from the service of summons, which time-limit is applicable
to a commercial suit. An application for condonation of the delay in filing
written statement is now pending but no order has been passed for
condonation. Therefore, there is no written statement and/or defence under
Section 30(2)(e) of the TM Act as of now. Under Section 124(5) of the TM Act,
even if a stay is operative, it will not preclude from the court from passing
interlocutory orders. The issue, it is submitted, is pending reference before a
Larger Bench in Abros Sports International (P) Ltd. v. Ashish Bansal , reported
at 2025 SCC OnLine Del 3410 .
50. It is submitted that all the aforesaid provisions clearly indicate that there is
no absolute bar in maintaining a passing off/infringement action even
against a registered proprietor/user.
51. Learned senior counsel next contends that a contradictory stand has been
taken by the defendants. Whereas Section 28(3) of the TM Act has been
relied on in the vacating application of the order of injunction in respect of
infringement, no defence has been allowed under Section 29(1) and 29(4).
Section 29(1) of the TM Act speaks of the plaintiff’s registration and not that
of the infringer.
52. Also, Section 2(1)(r)(ii)(c)of the TM Act contemplates “permitted use” by way
of a written consent from the registered proprietor. In the present case, there
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was a purported consent from the defendant-respondent no. 4 of its mark
and not the plaintiff’s mark. Thus, Section 29(1) is not attracted.
53. Moreover, it is argued that the defendant no. 1/appellant is not the
registered proprietor and cannot take a defence under Sections 28(3) and
Section 30(2)(e). That apart, the defendant no. 1 in the present case has
expressly abandoned such defence.
54. The learned Single Judge observed in the impugned order that the
purported license agreements relied by the defendant no. 1/appellant from
defendant/respondent no. 4 were invalid. From the documents produced by
the defendants, it transpires that those were agreements for rent and were
executed and authorised on July 29, 2022. The agreement was apparently
for the period from April 1, 2021 to March 31, 2023, thus, pre-dating the
execution of the same. In any event, admittedly there was no license
between April 1, 2021 and July 29, 2022. However, the invoices produced by
the appellant allege that the agreement/consent already existed.
55. Moreover, the infringing packets do not mention the defendant no. 4/alleged
proprietor in such capacity. Rather, the expression “ ® ” appears in the
packets next to the name of the defendant no. 1/appellant, IAKA Global.
Thus, a false impression is sought to be given that the appellant is the
registered proprietor of the mark, which is contrary to his pleading.
56. Learned senior counsel further argues that the royalty payment documents
relied on by the defendants, allegedly executed by the defendant no.
1/appellant in favour of the defendant/respondent no. 4, are fabricated. The
vouchers are unsigned, unstamped and without any number, license fees for
particular years being split into multiple vouchers of Rs.10,000/- or less
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each, to circumvent Section 40(A)(3) of the Income Tax Act, 1961, and the
account heads in the vouchers shown as “Legal Expenses A/C”, not royalty.
Also, the vouchers are for the periods between 2022-23 and 2023-24 and
not for 2021-22. The appellant contends that defendant/respondent no. 2
has been using IJM Gold Stag under permission from defendant/respondent
no. 4, which is false. The document dated March 4, 2025 was executed after
service of the suit papers and does not reflect any consideration for the
permissions or reasons for abandonment of use. No document of permission
to use by defendant/respondent no. 2, granted by defendant/respondent no.
4, since 2013 has been produced. Defendant/respondent no. 2 asserted its
independent rights to the marks by filing applications of registration of the
marks “IGPL Gold Stag” and “IGPL Gold Stag Super” in 2019, therefore
belying its claim as a permissive user.
57. Moreover, the defendant/respondent no. 2 claimed to be the proprietor of
the “Gold Stag” mark by independently applying for registration on
December 23, 2016, December 23, 2018 and October 7, 2019. The mark of
the defendant no. 4 was cited as objection by the Trade Mark Registry and
defendant no. 2 gave out that it was different from its own mark. Defendant
no. 1/appellant also claimed abandonment of the trade mark in its
application for copyright registration, but applied for registration of similar
trade marks even after obtaining copyright registration on July 18, 2019,
that is on October 7, 2019.
58. No permission from the defendant no. 4 to defendant no. 2 has been
disclosed and the defendant no. 2, itself being a licensee, could not have
granted further license to the defendant no. 1/appellant.
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59. Learned senior counsel for the plaintiff/respondent no. 1 further argues that
there is no substantial evidence to establish the use of the trade mark “IJM
Gold Stag” by defendant nos. 1 and 2. The documents pertaining to sale,
produced by the defendants, are evidently fabricated, being undated, self-
attested sales figure certificates without any relevant particulars, the sales
being meagre. Thus, the defendant no. 1/appellant is a fly-by-night
operator. Moreover, the invoices of the appellant are from March, 2021, pre-
dating the alleged license from defendant no. 4. All the sales, as reflected
from the said documents, are to a single entity, namely one Jagdambay
Enterprise, allegedly a wholesale distributor. The invoices even pre-date the
appellant’s registration with the Tobacco Board dated July 19, 2021 and
indicate stock transfers, not sales. One Mr. Deepak Kumar is the common
thread between the defendants, being the proprietor of AA Enterprises as
well as Director of defendant nos. 4, 7 and 9. All the invoices are apparently
in his favour. He also signed the license agreement allegedly executed by
defendant no. 4 in favour of defendant no. 1/appellant. Thus, there is no
concrete proof of valid sales by the defendant no. 1/appellant.
60. Elaborating on the disclaimer of the term “Gold”, it is argued that the said
word is a pragmatic feature of the plaintiff’s trade mark and has also
acquired a secondary meaning in relation to the plaintiff. The said facts, it is
argued, are borne out by different judgments of the Delhi High Court dated
March 24, 2022, February 27, 2024 and March 13, 2024. In Pernod Ricard
3
India (supra) , it was recognised that the Court may identify the prominent
3
Pernod Ricard India (P) Ltd. v. Karanveer Singh Chhabra, 2025 , reported at SCC OnLine SC
1701
19
feature of a trade mark and even generic terms can be monopolised if those
have acquired a secondary meaning in respect of the mark of a
proprietor/user. The plaintiff’s trade mark was registered prior to that of the
defendant no. 4, that is on May 16, 2012. There has been open, continuous
and extensive use of the term ‘Gold’ in its products by the plaintiff since the
year 1905. The striking resemblance in get-up, lay out, colour combination,
use of devices and placement of features between the products of the parties
is palpable.
61. Hence, irrespective of the disclaimer, the word ‘gold’ is inextricably
associated with the plaintiffs mark.
62. It was recognised in ITC Limited v. Golden Tobacco Limited , reported at 2018
SCC OnLine Mad 2437 by the Delhi High Court that the disclaimers on the
term ‘Gold’ in respect of the plaintiff’s trade mark registrations in the Trade
Mark Registry were erroneous. The plaintiff has specifically written to the
Registrar seeking correction of the same on February 24, 2020 and the
concerned portal of the Trade Mark Registrar indicates that the status
reports (which are relied on by the defendant no. 1/appellant) are “not for
legal use”. Moreover, the disclaimers have since been removed from the
status page of the Trade Mark Registry website. Moreover, at least regarding
three of the registered trade marks, there was no such disclaimer. By relying
on WOW MOMO Foods (P) Ltd. v. WOW Burger , reported at 2025 SCC OnLine
Del 6545 , it is argued that the disclaimer in respect of a particular mark
cannot affect the other registered marks of the same proprietor. As to the
similarity between the infringing mark and that of the plaintiff/respondent
no. 1, it is argued that the appellant’s contentions in that regard are
20
misplaced. Since 85 per cent of the packaging is covered by the statutory
health warning, only 15 per cent is reserved for the unique mark of a
seller/user. With such limited place for the actual marks, confusion and
deception is imminent when the marks are structurally similar and/or
identical. In support of such contention, learned senior counsel for the
4
respondent no. 1 cites ITC Limited v. Golden Tobacco Limited (supra) , ITC
Ltd. v. Pelican Tobacco Co. Ltd., reported at 2025 SCC OnLine Del 8592 and
ITC Limited vs Whole Leaf Tobacco Venture Pvt. Ltd And Others, reported at
AIR 2019 Cal 215.
63. The respondent no. 1 next contends that the defendant no. 1/appellant is
not a licensee of the copyright originally registered in the name of defendant
no. 2. The registrations relied on by the defendant are ex facie invalid, being
obtained by fraud and contrary to the CR Act and Rules. The date of the
alleged first publication is 2013, whereas the graphical warning rule came
into effect on and from April 1, 2016, that is, three years thereafter. The
work bears the date of manufacture to be February, 2018. Moreover, no
notice was given to the plaintiff, which is an “interested person” under Rule
70(9) of the CR Rules. Also, written licenses are required under Sections 30,
30A and 19 of the CR Act, which are absent in the present case.
64. The copyright license allegedly given by the defendant no. 2 to the defendant
no. 1/appellant is fabricated. It is seen from the document produced by the
appellant that there was an alleged oral agreement in 2021, without
mentioning any exact date, and a letter issued in that regard was dated
March 4, 2025, after filing of the suit. There is neither any particular in the
4
ITC Limited v. Golden Tobacco Limited, reported at 2018 SCC OnLine Mad 2437
21
purported license of copyright furnished by the appellant, nor any signature
on behalf of the appellant on the March 4, 2025 letter.
65. Insofar as the plaintiff’s copyright registration is concerned, although the
appellant argues that the same is invalid, such objection was never raised
before the learned Single Judge, nor is there any such ground in the
memorandum of the present appeal. If confronted with such objection at any
earlier stage, the plaintiff could very well have produced the No-Objection
Certificates from the artist and in the Trade Mark Registry which are
available with the plaintiff. The artistic work of the plaintiff was also not
challenged before the learned Single Judge. In any event, artistic quality is
not required to be possessed by a work to come under Section 2(c)(i) of the
CR Act.
66.
The appellant argues that the plaintiff is not the ‘author’ of the artistic work
under the CR Act, whereas the plaintiff/respondent no. 1 does not claim to
be so at all. It claims ownership, and not authorship, of the copyright under
Section 17(c) of the CR Act and the product labels were created under the
instruction of and for the plaintiff.
67. The appellant’s argument of expiry of the copyright after 60 years is also
misplaced and such objection was not raised before the learned Single
Judge. The plaintiff’s later registrations of copyright are adaptions of its
earlier artistic work under Section 14(c)(v) of the CR Act. Earlier, the star in
the mark was inside the roundel whereas now it is outside the same. In any
event, the artist Mr. Meet Jain is still alive whereas the 60 years’
moratorium starts from the death of the author, thus, not applicable in the
present case.
22
68. Under Section 2(d) of the Designs act, 2000, artistic designs are applicable
to ‘articles’ under Section 2(a) which are capable of being made and sold
separately. Cigarette packaging is not such an ‘article’, since it is sold only
with cigarette/tobacco products.
69. The alleged difference in pricing of the products of the plaintiff and the
defendant no. 1 respectively is not germane, since their products are sold
from the same sales outlets and trading channels and to the same set of
customers.
70. Lastly, the respondent no. 1 argues that the objection as to purported non-
compliance of Order XXXIX Rule 3 of the Code was not pressed by the
appellant during arguments. Even otherwise, the same could at best have
vitiated the initial ex parte order of ad interim objection, which has since
merged with the final order of temporary injunction which is impugned
before this court, dated June 20, 2025.
71. Thus, the respondent no.1 seeks dismissal of the appeal.
72. From the arguments advanced by the parties, the following issues can be
culled out for adjudication of the present appeal:
(i) Jurisdiction;
(ii) Suit for infringement against registered user – maintainability;
(iii) Whether the defendant no.1/appellant is entitled to claim right of user
on the strength of the trade mark of the infringing product;
(iv) Whether the plaintiff/defendant no. 1 can assert rights on the word
“Gold” in the trade mark “Gold Flake”;
(v) Whether any case of passing off/infringement has been made out by
the plaintiff on merits.
23
73. The above issues are dealt with as follows:
(i) Jurisdiction
74. In order to ascertain whether the learned Single Judge had jurisdiction to
entertain the suit, the interplay between Clauses 12 and 14 of the Letters
Patent of this Court are to be looked into. The said Clauses are set out
below:
“12. Original jurisdiction as to suits.—And We do further ordain, that the
said High Court of Judicature at Fort William in Bengal, in the exercise of its
ordinary original civil jurisdiction, shall be empowered to receive, try, and
determine suits of every description, if, in the case of suits for land or other
immoveable property, such land or property shall be situated, or in all other
cases if the cause of action shall have arisen, either wholly, or, in case the
leave of the Court shall have been first obtained, in part, within the local
limits of the ordinary original jurisdiction commencement of the suit shall
dwell, or carry on business, or personally work for gain within such limits;
except that the said High Court shall not have such original jurisdiction in
cases falling within the jurisdiction of the Small Cause Court at Calcutta, in
which the debt or damage, or value of the property6 sued for, does not exceed
One hundred rupees.
*
14. Joinder of several causes of action.—And We do further ordain, that
where Plaintiff has several causes of action against a Defendant, such causes
of action no being for land or other immovable property, and the said High
Court shall have original jurisdiction in respect of one of such causes of action,
it shall be lawful for the said High Court to call on the Defendant to show
cause why the several causes of action should not be joined together in one
suit, and to make such order for trial of the same as to the said High Court
shall seem fit.”
75. From a bare perusal of the two provisions, it is evident that the two operate
in somewhat separate fields. Whereas Clause 12 refers to the self-same
cause of action, a part of which might have arisen beyond the local limits of
24
the ordinary original jurisdiction of this Court, Clause 14 refers to several
causes of action, one of which arises outside the jurisdiction of this Court.
76. Cause of action is comprised of a series of facts which entitle the Plaintiff to
get the reliefs claimed in the suit and, as such, is inextricably linked with
the reliefs sought.
77. In the present suit, both reliefs, infringement of registered trade marks and
copyrights as well as passing off, have been sought. Thus, it is Clause 14
which is more applicable than Clause 12.
78. Insofar as Clause 12 is concerned, in Paragraph Nos. 36, 44, 45, 54, 56, 57
and 58 of the plaint, which are referred to in Paragraph No. 69 thereof, it
has been mentioned categorically that a part of the cause of action has
arisen within the jurisdiction of this Court. In Paragraph Nos. 71 and 71,
the plaintiffs, on the basis of the plaint averments, expresses reasonable
apprehension and uncertainty as to whether their trade marks/copyrights
would be infringed or passed off within West Bengal, including Kolkata as
well. Thus, there are sufficient pleadings in the plaint as to part of the
cause of action having arisen within the territorial jurisdiction of this Court.
At the stage of deciding an application for injunction, the Court is to look at
the frame of the suit, as disclosed in the plaint. It is the frame of the suit
which is the determinant and the context of deciding the question of
jurisdiction as a component of prima facie case for grant of temporary
injunction. The veracity of the pleadings can only be assessed conclusively
during trial on evidence.
79. Insofar as leave under Clause 12 is concerned, we need not dwell much on
the academics of the same in the facts of the instant case, since such leave
25
was, in fact, granted by the learned Single Judge. In the Order dated
February 5, 2025 passed in IP-COM 12 of 2025, the suit Court recorded that
leave was granted under Order II Rule 2 of the Code. However, vide Order
dated February 18, 2025 passed therein, the learned Single Judge corrected
the Order dated February 5, 2025 to the effect that leave under Clause 12 of
the Letters Patent, 1865 was granted by the said earlier order, whereas it
was wrongly recorded as Order II Rule 2.
80. Thus, leave under Clause 12 having been granted at the inception, no
objection as to jurisdiction can be raised on such ground.
81. Coming to Clause 14, we find a cardinal difference between the said
provision and Clause 12. From a plain reading of the language of Clause
12, it is evident that in order to assume jurisdiction to take up suit where a
part of the cause of action arises out of the territorial jurisdiction of this
Court, “leave” shall have to be “obtained”. Thus, a specific leave, that too
before proceeding to entertain the suit, is envisaged under Clause 12. The
language of Clause 12 is that such leave shall be necessary to empower the
Court to “receive”, try and determine suits of every description, thereby
meaning that the leave has to be obtained even before receiving the suit
formally.
82. On the other hand, Clause 14 envisages no such leave but merely a “show
cause” to be issued, followed by an “order for trial” of the suit, in the event
several causes of action, one of which lies outside the jurisdiction of this
Court, are to be joined.
83. This principle was reiterated by the Madras High Court in
Arvind
Laboratories (supra)
26
84. Thus, a mere show cause would suffice under Clause 14, as opposed to a
leave, followed by an order, that too for the purpose of trial of the suit and
not to entertain or ‘receive’ it. Such order is not to “receive” the suit, as in
Clause 12, but for “trial” of the suit. Hence, a show cause has to be issued
and an order passed for joinder of several causes of action under Clause 14
at any point of time before the trial of the suit commences. As such, there
cannot be any embargo on the Court entertaining the suit and passing
interim orders at any point of time before trial commences, even without any
order under Clause 14.
85. A Division Bench of this Court, in Godfrey Phillips (supra) , categorically held
that leave under Clause 14 of the Letters Patent may be granted at a
subsequent stage after filing of the suit.
86.
In the facts of the present case, a show cause was actually issued under
Clause 14, to which no reply was given by the defendant/appellant within
the time stipulated in the order issuing show cause. Hence, the
defendant/appellant has lost his right to oppose an order of joinder of the
different causes of action for the purpose of trial. Clause 14, in the facts of
the case, has been substantially complied with by the suit court.
87. We cannot lose sight of the fact that both Clauses 12 and 14 of the Letters
Patent pertain to territorial jurisdiction of the court and not subject-matter
jurisdiction, contrary to the submissions made by the appellant.
88. Under both the provisions, the thrust is on a part of the cause of action or
one/some of the several causes of action arising outside the territorial
jurisdiction of the court, thus, directly linking the issue of jurisdiction with
territoriality.
27
89. It is well-settled that an objection as to territorial jurisdiction has to be
taken at the earliest possible opportunity.
90. It is noteworthy that although the provisions of the Code of Civil Procedure
are applicable by default to a suit instituted in the Original Side of this
court, Section 120 of the Code specifically bars the applicability of Sections
16, 17 and 20 of the Code, which relate to jurisdiction, to such a suit.
However, conspicuously, the operation of Section 21 of the Code, which
mandates an objection as to territorial or pecuniary jurisdiction to be taken
at the earliest possible opportunity, is not precluded to suits in the Original
Side of this Court by Section 120 of the Code. Hence, an objection as to
territorial jurisdiction has to be taken at the first instance, although the
jurisdiction of the court is otherwise governed by the Clauses of the Letters
Patent and not by Sections, 16, 17 and 20 of the Code. The
defendant/appellant, however, has not taken any such objection before the
suit court. Rather, he has waived his right to take such objection by
choosing to abstain from giving any reply to the show cause issued under
Clause 14 by the suit court.
5
91. In Hindustan Unilever Limited (supra) , leave was not taken either under
Clause 12 or 14 of the Letters Patent. Moreover, there was lack of material
documents and other grounds in the said case, which prompted the court to
come to its conclusions, none of which are applicable to the present case.
Hence, the proposition laid down therein is not attracted in the particular
context of the case at hand.
5
Hindustan Unilever Limited v. Three Leaves India Pvt. Ltd. , reported at 2016 SCC OnLine Cal
11151
28
6
92. In Asma Lateef (supra) , it was held that the court is to affirm and record
prima facie satisfaction as to maintainability of a suit in respect of a bar of
law if objection is raised by the person affected . Here, no such objection was
raised before the suit court but is being urged for the first time in the
6
present appeal. Hence, the proposition laid down in Asma Lateef (supra) is
not attracted as well.
93. The next aspect of the matter on the question of jurisdiction is the effect of
Section 134(2) of the TM Act and Section 62(2) of the CR Act, both of which
are couched in similar language.
94. The said provisions, in unambiguous terms, provide that a suit for
infringement of a registered trade mark or for passing off and/or for
infringement of copyright can be instituted within the local limits of the
District Court having jurisdiction at the time of institution of the suit, which
includes the District Court having jurisdiction over the locality where the
plaintiff or plaintiffs actually or voluntarily reside or carry on business or
personally work for gain. It is an admitted position that the respondent no.
1-company has its registered head office in Kolkata, within the territorial
jurisdiction of this court.
7
95. In Indian Performing Rights Society Ltd. (supra) , it was held that where the
plaintiff’s principal office and a part of the cause of action lie within the
jurisdiction of a particular court, the suit has to be filed there, even if the
plaintiff has a subordinate office elsewhere.
6
Asma Lateef and another v. Shabbir Ahmad and others , reported at (2024) 4 SCC 696
7
Indian Performing Rights Society Ltd. v. Sanjay Dalia and another , reported at (2015) 10 SCC
161
29
96. In the present case, the exact reverse has been argued by the defendant,
contending that the suit should have been filed in Punjab, where at least a
part of the cause of action has arisen and the principal has a subordinate
office, it being undisputed that the principal office of the plaintiff is situated
at Kolkata. Thus, the proposition laid down in Indian Performing Rights
8
Society Ltd. (supra) is not squarely applicable to the present case. As
opposed to the said case, the principal office of the plaintiff is situated in
Kolkata, within the jurisdiction of this court; thus, squarely covered by
Section 134(2) of the TM Act and Section 62(2) of the CR Act. Nothing has
been brought on record to indicate that the plaintiff/respondent no. 1 has
any subordinate office in Punjab at all.
97. Another distinguishing feature is that in Indian Performing Rights Society
8
Ltd. (supra) , the Hon’ble Supreme Court relied on Section 20 of the Code of
Civil Procedure to interpret the non obstante clause in question purposively,
whereas, by operation of Section 120 of the Code, Section 20 is not
applicable at all to suits in the Original Side of this court.
9
98. Insofar as Ultra Home Construction Pvt. Ltd. (supra) is concerned, the said
8
proposition was based on Indian Performing Rights Society Ltd. (supra) and
Section 20 of the Code and, hence, is also not applicable to the present case.
9
With utmost respect, in Ultra Home Construction Pvt. Ltd. (supra) , the Delhi
High Court somewhat misinterpreted the provision laid down in
8
Indian Performing Rights Society Ltd. v. Sanjay Dalia and another , reported at (2015) 10 SCC
161
9
Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey , reported at 2016 SCC
OnLine Del 376
30
10
Indian Performing Rights Society Ltd. (supra) , where it was held that if the
principal office and a part of the cause of action arises within the
jurisdiction of a court, the suit has to be filed there, and not in a jurisdiction
where an obscure subordinate office of the plaintiff is situated.
99. By necessary implication, such proposition would not be applicable to the
present case, where the plaintiffs’ principal office is situated within the
territorial jurisdiction of this court and, as per the plaint, a part of the cause
of action also arises herein. Rather, nothing has been produced to show that
the plaintiff has any subordinate office in Punjab. The proposition laid down
10
in Indian Performing Rights Society Ltd. (supra) was turned on his head in
11
Ultra Home Construction Pvt. Ltd. (supra) by applying the ratio therein in a
reverse factual matrix, despite the principal office of the plaintiff being
situated elsewhere.
100. In such view of the matter, this court comes to the conclusion that the suit
court had and has the jurisdiction to entertain the suit and to decide the
same on merits.
(ii) Suit for infringement against registered user – maintainability
101. The scheme contained in Sections 28, 29 and 30 of the TM Act is to be
considered to answer this question.
102. Under Section 30(2)(e), a registered trade mark is not infringed where the
use of a registered trade mark, being one of two or more trade marks
10
Indian Performing Rights Society Ltd. v. Sanjay Dalia and another , reported at (2015) 10 SCC
161
11
Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey , reported at 2016 SCC
OnLine Del 376
31
registered under the TM Act, which are identical or nearly resemble each
other, is in exercise of the right to the use of that trade mark given by
registration under the Act.
103. There is one important ingredient which is to be noted in the above
provision. The bar therein applies only when the alleged infringer uses such
trade mark “in exercise of the right to use of that trade mark given by
registration ”. Thus, such bar applies only in cases of infringement of trade
mark solely on the basis of registration, but does not cover passing off
actions, which are registration-agnostic.
104. Again, Section 28(3) of the TM Act provides that where two or more persons
are registered proprietors of trade marks which are identical with or nearly
resemble each other, the exclusive right to the use of any of those trade
marks shall not (except so far as their respective rights are subject to any
conditions or limitations entered on the register) be deemed to have been
acquired by any one of those persons as against any other of those persons
merely by registration of the trade marks, although each of those persons
has otherwise the same rights as against other persons (not being registered
users using by way of permitted use) as he would have if he was the sole
registered proprietor.
105. Section 28(1)(3), thus, carves out an exception to the infringement provided
under Section 29 in general. Under Section 29(4)(a), a registered trade mark
is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade a mark which is
identical with or similar to the registered trade mark.
32
106. A conjoint reading of Section 30(2)(e) and Section 28(3) of the TM Act
indicates a direct link between the infringement and the registration.
Whereas the former provision refers to the right to use “given by
registration”, the latter speaks about right to use “merely by registration”.
Hence, the exception carved out in the said provisions both relate to
infringement of a registered trade mark merely on the strength of such
registration and do not apply to passing off actions, which are independent
of registration.
107. Both Section 28(3) and Section 29(4) exclude from the purview of
infringement “registered proprietors” and “registered users using by way of
permitted use”. Thus, under the said provisions, the proprietor/owner of a
registered trade mark is debarred from claiming infringement against other
registered proprietors and registered permitted users of identical or similar
trade marks.
108. A close scrutiny of the context of usage of the said similar expression in both
the provisions would reveal that the registered permitted users being
referred to therein are not users of the infringing trade mark but of the trade
mark which is alleged to be infringed . Otherwise, there will be a confusion of
ideas as per the language of the said Sections.
109. As a necessary corollary, registered permitted users of the infringing trade
mark are not protected from legal action for infringement under any of the
said provisions. It is obvious from the language of Section 29(4) of the TM
Act that registered proprietors and permitted users are placed on the same
footing insofar as protection from infringement action is concerned. Since a
similar expression is used also in Section 28(3), the term
33
“registered/permitted users”, as used in Section 28(3), must draw its hue
from Section 29(4) in view of the identity of the phrase and ought to be
construed to refer to registered/permitted users of the infringed trade mark
itself, and not to registered/permitted users of the infringing
(identical/similar) mark.
110. Thus, even an infringement action is maintainable against a registered
permitted user of an infringing trade mark, if such permission is given by
the infringer, although the proprietor of the similar or deceptive infringing
trade mark is protected under Section 28(3). Thus, the protection under
Section 28(3) covers only registered proprietors/owners of the similar or
identical infringing trade mark and not permitted users of such mark.
111. Accordingly, the following moot concepts emerge from a conjoint reading of
Sections 28 to 30 of the TM Act :
(i) No infringement can be claimed against the proprietor of a registered
trade mark which is identical with or nearly resembles the ‘infringed’
trade mark;
(ii) No such claim can be made against a registered permitted user of the
infringed trade mark;
(iii) Infringement can be claimed against the registered permitted user
claiming under the proprietor of an identical or merely similar
trademark; and
(iv) A passing off action is maintainable universally, including against
registered proprietors and permitted users of an identical or
deceptively similar trade mark.
34
112. It is also to be noted here that Section 124 of the TM Act circumscribes the
algorithm created by Sections 28 to 30. The said Section is quoted
hereinbelow:
“ 124. Stay of proceedings where the validity of registration of the trade
mark is questioned, etc. —(1) Where in any suit for infringement of a trade mark—
(a) the defendant pleads that registration of the plaintiff’s trade mark is
invalid;
(b) the defendant raises a defence under clause (e) of sub-section (2) of section
30 and the plaintiff pleads the invalidity of registration of the defendant’s
trade mark,
the court trying the suit (hereinafter referred to as the court), shall,—
(i) If any proceedings for rectification of the register in relation to the
plaintiff’s or defendant’s trade mark are pending before the
Registrar of the High Court, stay the suit pending the final disposal
of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that
the plea regarding the invalidity of the registration of the plaintiff’s
or defendant’s trade mark is prima facie tenable, raise an issue
regarding the same and adjourn the case for a period of three
months from the date of the framing of the issue in order to enable
the party concerned to apply to the High Court for rectification of the
register.
(2) If the party concerned proves the court that he has made any such
application as is referred to in clause (b)(ii) of sub-section (1) within the time specified
therein or within such extended time as the court may for sufficient cause allow, the
trail of the suit shall stand stayed until the final disposal of the rectification
proceedings.
(3) If no such application as aforesaid has been made within the time so
specified or within such extended time as the court may allow, the issue as to the
validity of the registration of the trade mark concerned shall be deemed to have been
abandoned and the court shall proceed with the suit in regard to the other issues in
the case.
(4) The final order made in any rectification proceedings referred to in sub-
section (1) or sub-section (2) shall be binding upon the parties and the court shall
dispose of the suit conformably to such order in so far as it relates to the issue as to
the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this
section shall not preclude the court from making any interlocutory order (including
any order granting an injunction directing account to be kept, appointing a receiver or
attaching any property), during the period of the stay of the suit. ”
35
113. Thus, Section 124 implicitly recognises the maintainability of a suit for
infringement of a trade mark universally, without distinguishing between
registered proprietors of an identical and nearly resembling trade marks and
others. Under sub-section (1) of Section 124, such a suit is maintainable
when the defendant pleads that the plaintiff’s trade mark is invalid or the
defendant raises a defence under Section 30(2)(e) and the plaintiff pleads the
invalidity of registration of the defendant’s trade mark.
114. Under Section 124 (1)(b), even if a plea of the defendant being the proprietor
of an identical or similar trade mark is taken under Section 28(3) or 30(2)(e),
the suit will be maintainable if the plaintiff pleads the invalidity of
registration of the defendant’s trade mark.
115. In such cases, it is further provided that the court shall stay the suit
pending final disposal of any subsisting rectification proceeding or adjourn
the case for three months from the date of framing of the issues to enable
the concerned party to apply to the High Court for rectification of the
register.
116. The subsequent sub-sections of Section 124, from (2) to (4), provide for the
course of action to be taken by the court in such situations. Under sub-
section (5) of Section 124, it is categorically provided that the stay of a suit
for infringement of trade mark under the said section shall not preclude the
court from making any interlocutory order (including an order granting an
injunction directing account to be kept, appointing a receiver on attaching
any property), during the period of the stay of a suit . Hence, even if a
competing registration is claimed in respect of the alleged infringing trade
36
mark of the defendant, not only the institution of the suit but also the grant
of interlocutory protective orders is permitted under Section 124.
117. Read in conjunction, Sections 28 to 30 on the one hand and Section 124 of
the TM Act on the other, although providing a bar against claim of
infringement against a registered proprietor of an identical or similar trade
mark, permit such claim to be made the subject-matter of a suit and, if a
prima facie case is made out, even to grant interim protection in such a suit.
118. In the facts of the present case, the temporary injunction application was
heard in the presence of both the parties. In Paragraph 23 of the plaint, it is
alleged that the defendant no. 1/appellant is not a registered user of the
offending trade mark “IJM Gold Stag”. Again, in Paragraph no. 26, it is
pleaded that there is no such product in the name of defendant/respondent
no. 2.
119. In Paragraph no. 47 of the plaint, it is averred that although the
defendant/respondent no. 4 has a registration in respect of the offending
product, but there is no proof of any product being in the market in the
name of defendant/respondent no. 4 under the offending trade mark. It is
further pleaded categorically that registration in the name of
defendant/respondent no. 4 was wrongly granted.
120. Thus, the pleadings in the plaint and the injunction application, read with
the averments of the written objection filed by the defendant no.
1/appellant, squarely brings the matter within the purview of Section 124
(1)(b), thus rendering the suit maintainable.
121. Under sub-section (5) of Section 124, there is no bar to the court granting
an interlocutory protection as well. The proper course of action for the suit
37
court would be, at best, to await the outcome of rectification application, if
any pending, and/or adjourn the hearing of the suit for three months from
the date of framing of issues to enable the party concerned to apply to this
Court for rectification of the register. However, in the present appeal, which
is against a temporary injunction order before framing of issues, the said
question does not arise at all.
122. Hence, while deciding this question, we conclude as follows:
(a) Section 28 to 30 of the TM Act, per se , do not operate as a bar to filing
of a suit or grant of interlocutory order therein but merely debar a
claim to the exclusive right of one registered proprietor against
another in respect of identical or nearly similar trade marks, subject
to the circumstances mentioned under Section 124 of the said Act.
Rather, Section 124 recognises the right to file a suit even against a
proprietor of a deceptively similar or identical trade mark, which is
registered, if the validity of such registration is disputed. The question
of whether both the proprietors have duly registered trade marks, thus
attracting the bar under Sections 28 to 30, is to be considered only
upon trial on evidence.
(b) At best, if a dispute is raised in the suit in that regard, the court will
either grant a stay, if a rectification application is pending, or adjourn
the suit for three months for framing of issues in order to enable the
issue to be resolved.
38
12
123. The appellant cites S. Syed Mohideen (supra) , where the Hon’ble Supreme
Court was dealing with an appeal arising out of the final disposal of a suit,
where evidence was fully adduced by the parties, as opposed to the stage of
interlocutory injunction, as in the present case.
124. Secondly, Paragraph no. 17 of the said judgment indicates that in the said
case, the action was in respect of a valid registration of the defendant and
the court proceeded on the premise of such validity, as opposed to the
present case, where the plaintiff has categorically disputed the validity of the
registration of respondent no. 4 and disputed outright that the other
respondents have any right to use the offending trade mark.
125. Thirdly, in Paragraph no. 28 of the said report, it is recognised by the
Hon’ble Supreme Court that the bar in respect of a competing similar
registered trade mark was only in the context of Section 28 of the TM Act,
without reference to the other provisions of the Act.
126. In paragraph no. 33.2 of the said report, the Hon’ble Supreme Court held
that in case of a conflict between two registered proprietors, the better and
superior rights in common law, on the strength of open, extensive and
pervasive prior user, is to be evaluated. In the said case, injunction was, in
fact, granted on the premise of such extensive and continuous prior user, in
the process observing that registration was merely a recognition of the rights
pre-existing in common law.
12
127. Hence, even as per S. Syed Mohideen (supra) , registration itself is not the
sole basis of the rights for an infringement or passing off action but is
merely a recognition of the pre-existing rights in common law. The Court,
12
S. Syed Mohideen v. P. Sulochana Bai , reported at (2016) 2 SCC 683
39
thus, has to ascertain even in case of competing registered trade marks as
to which one of the competing marks is backed by superior right of user.
13
128. In M/s. Vaidya Rishi India Private Limited (supra) , the Hon’ble Supreme
18
Court primarily relied on S. Syed Mohideen (supra) . However, with due
respect, the effect of Paragraph no. 33.2 of the S. Syed Mohideen judgment
was somewhat misconstrued in M/s. Vaidya Rishi India Private Limited
(supra) by holding that the Hon’ble Supreme Court had merely held that
there was no bar in a passing off action. However, in the relevant
paragraphs, as discussed above, the Hon’ble Supreme Court did not confine
its examination merely to passing off but categorically observed that
registration was merely the recognition of a pre-existing common law right
and, even in case of a conflict between two registered proprietors, chose to
grant injunction in favour of the prior common and pervasive user on the
strength of such common law right of the prior user, despite the adversary
having a registered trade mark as well. Moreover, in Paragraph no. 19.13 of
13
M/s. Vaidya Rishi India Private Limited (supra) , the Delhi High Court
14
recognised that the Hon’ble Supreme Court, in S. Syed Mohideen (supra) ,
did not consider Section 124 of the TM Act but nonetheless, went on to
observe that it made no difference, which, in view of our earlier discussion,
does not appear to be the correct position of law.
129. This question, thus, is decided in favour of the plaintiff/respondent no. 1,
holding the suit to be maintainable, both for infringement and/or passing
off.
13
M/s. Vaidya Rishi India Private Limited & Anr. v. Suresh Dutt Parashar & Ors. dated August 7,
2025, passed in FAO (COMM) 122/2024
14
S. Syed Mohideen v. P. Sulochana Bai , reported at (2016) 2 SCC 683
40
(iii) Whether the defendant no.1/appellant is entitled to claim right
of user on the strength of the trade mark of the infringing
product
130. The defendant no. 1/appellant claims right of user in the alleged infringing
trade mark on the strength of written permission granted by the registered
proprietor thereof. However, no document substantiating such registration
has been brought before the court. Hence, the requirement under Section 48
of the TM Act is not satisfied as such.
131. Again, under Section 49(1)(a) of the TM Act, in order to have a valid right of
user, it is mandatory that there has to be an agreement between the
registered proprietor and the user in writing. At least, a duly authenticated
copy thereof is to be produced. Clause (b) of sub-section (1) of Section 49
requires an affidavit to be made with an application for registration of the
right of user by the registered proprietor or by his authorised person to the
satisfaction of the Registrar, giving particulars as enumerated therein, which
has also not been brought before the court in the present case.
132. In the plaint, the plaintiff/respondent no. 1 has alleged that the so-called
license agreements allegedly issued by defendant no. 4, the registered
proprietor, in favour of defendant no. 1/appellant, are invalid. The first
premise of such invalidity is that the amount payable under the agreement
produced has been described as “rent”. However, benefit of doubt can be
given in favour of the appellant to the extent that the terminology “rent” is a
lose translation of the contents of the original document and the true
purport of the expression “rent” might have been lost in translation. Also,
41
the absence of any specific terminology in Indian languages for ‘license fee’,
as opposed to ‘rent’, may be responsible for such description of the amount.
Hence, ipso facto , such ‘misdescription’ does not per se render the
agreement invalid.
133. The plaintiff/respondent no. 1 further alleges that the agreement produced
by the appellant was executed on July 29, 2022 whereas the user has been
claimed from April 1, 2021 to March 31, 2023 in the said document itself.
Thus, admittedly, the appellant did not have permission of user of the trade
mark during the period between April 1, 2021 and July 29, 2022, when the
said agreement was actually executed. The TM Act does not recognise any
retrospective agreement as such.
134. Another sticking point for the appellant is that the infringing packets, which
were ceased by the Special Officers appointed by this court, used the sign
“ ® ” against the name of the sole proprietorship of defendant no.
1/appellant, thus giving the false impression that the said proprietorship
concern of the appellant is the owner of the trade mark, which is
contradictory to his claim that he is a registered user , as opposed to a
registered proprietor . In the packets carrying the trade mark, it has not been
claimed that defendant no. 4 (IJM Cigarette Company Private Limited) is the
proprietor, which is contradictory to the defence case as made out in the
written objection to the temporary injunction application filed in the suit
court.
135. Thirdly, the plaintiff alleges that the royalty payment documents produced
by the defendant no. 1/appellant are fabricated. We find such argument to
be viable, in view of the vouchers being unsigned, unstamped and carrying
42
no numbers. Moreover, the account head under which the payments have
been mentioned in the vouchers produced by the appellant give out that the
payments were on account of “legal expenses”, and not royalty. Moreover,
although the license had been claimed from 2021 to 2023, the vouchers are
of the period 2022-23 to 2023-24. Thus no voucher has been produced for
the period 2021-22.
136. That apart, a document dated March 4, 2025 has been produced by the
defendant no.1/appellant to show permission from the defendant no.
4/proprietor of the registered trade mark “IJM Gold Stag”, which document
was prepared after the service of the summons of the suit and does not
reflect any consideration having been paid for such permission and/or any
reason for abandonment of user by the defendant no. 4.
137.
Again, no document of permission of defendant no. 4 to defendant no. 2
since the year 2013, as claimed by the plaintiff, has been produced.
138. As per the allegation of the defendant no.1/appellant, the defendant no. 2
was the permitted user of the infringing trade mark under defendant no. 4.
However, a palpable contradiction arises since the defendant no. 2 asserted
its independent proprietary rights by filing registration application for the
mark “IGPL Gold Stag” and “IGPL Gold Stag Super”, in the year 2019. We
further notice that the defendant no. 2 claimed proprietorship of ‘IJM Gold
Stag’ by independently applying for registration in its own name on
December 23, 2016, December 23, 2018 and October 7. 2019. In such
applications, the mark of defendant no. 4 was cited by the Trade Mark
Registry as an objection to the applications, to which the defendant no. 2
took a defence that its marks were different, thus belying the case made out
43
in the present litigation as to the defendant no. 2 being a permissive user
under defendant no. 4 and vitiating the claim made by the defendant no.
1/appellant that the defendant no. 2, itself a permitted user, granted right of
user to the appellant.
139. The defendant no. 1 claimed abandonment of the infringing trade mark in
its copyright registration application, but again applied on October 7, 2019
for registration of a similar trade mark, even after obtaining copyright
registration on July 18, 2019.
140. Furthermore, no permission from the defendant no. 4 to the Defendant no. 2
has been disclosed. As such, the defendant no. 2 itself, claiming to be
licensee, could not have granted further license to the defendant no.
1/appellant.
141.
Moreover, no substantial evidence to establish the use of the trade mark
‘IJM Gold Stag’ by defendant no. 1 and 2 has been produced by way of any
document to establish valid sales by them.
142. The plaintiffs/respondent no. 1 alleges that the defendant no. 1 is a fly-by-
night operator and the documents regarding to its purported sale are
fabricated, being undated, self-attested, sales figure certificates with no
relevant particulars. All the sales depicted therein are of meagre amounts,
being directed towards a single entity, one Jagdambay Enterprises, allegedly
a wholesale distributor. The invoices furnished by the appellant pre-date its
registration with Tobacco Board on July 19, 2021 and indicate stock
transfers rather the sales.
143. One Dipak Kumar is the common thread between the defendants, being the
proprietor of one AA Enterprises as well as the common Director of
44
defendant nos. 4, 7 and 9. Although such fact, by itself, might not have been
germane, but all the invoices furnished in the suit court by the appellant
were in favour of such Dipak Kumar, who, surprisingly, also signed the
purported license agreement between the defendant no. 4 and 1.
144. However, although the plaintiff further argues that the amount paid was
split into the vouchers of Rs. 10,000/- or less each to circumvent Section
40(A)(3) of the Income Tax Act, 1961, such consideration, by itself, may not
be germane for the present consideration, although it might have some
relevance with regard to the alleged infraction of the said Act.
145. However, from the other points indicated above, a sufficiently strong
arguable case has been made out as to whether the defendant no.
1/appellant and defendant no. 2, at all, have or had any valid right of
permissive user. Again, the defendant no. 4 has not been shown to have ever
exercised its proprietary rights in respect of the infringing trade mark. Thus,
a sufficiently strong arguable case has been made out as to whether the
defendant no. 1/appellant is at all be entitled to claim valid right of user on
the strength of the trade mark of the allegedly infringing product.
146. Thus, this issue is also held against the appellant.
(iv) Whether the plaintiff/defendant no. 1 can assert rights on the
word “Gold” in the trade mark “Gold Flake”
147. The appellant has heavily relied on the disclaimer of the word ‘Gold’ by the
plaintiff/respondent no. 1 in its applications for registration of the trade
mark ‘Gold Flake’ as a whole.
45
15
148. In PhonePe (supra) , it was held by the Bombay High Court that if a person
disclaims the right to a particular word of a trade mark before the Registry,
it cannot do a volte face and claim the same right in court, being debarred
16
by “prosecution history estoppel”. Again, in Parakh Vanijya (P) Ltd. (supra) ,
the Hon’ble Supreme Court recognised the principle that the proprietor
cannot have an exclusive claim to a disclaimed word in a trade mark. A
17
similar proposition was reiterated in Premlata (supra) and Raman Kwatra
18
(supra) , where the Hon’ble Supreme Court and the Delhi High Court
respectively held that a proprietor cannot approbate and reprobate at the
same time in respect of components in a trade mark.
149. The above proposition is well-settled, but is not conclusive enough to cover
every aspect of the plaintiff’s claim in the present case. The first
distinguishing feature is that in the present case, disclaimer is reflected
from the official website of the Trade Mark Registry portal only in respect of
one of the trade marks, whereas there are at least three other trade marks of
similar nature which do not contain any such disclaimer. In WOW MOMO
19
Foods (P) Ltd. (supra) the Delhi High Court categorically held that the
disclaimer in respect of one registration cannot affect others, which is a
settled proposition of law. Hence, in any event, most of the trade marks
under the name ‘Gold Flake’ fall outside the purview of the disclaimer.
15
PhonePe (P) Ltd. v. Resilient Innovations (P) Ltd. , reported at 2023 SCC OnLine Bom 764
16
Parakh Vanijya (P) Ltd. v. Baroma Agro Product , reported at (2018) 16 SCC 632
17
Premlata v. Naseeb Bee , reported at (2022) 6 SCC 585
18
Raman Kwatra v. KEI Industries Ltd. , reported at 2023 SCC OnLine Del 38
19
WOW MOMO Foods (P) Ltd. v. WOW Burger , reported at 2025 SCC OnLine Del 6545
46
150. Even in respect of the alleged disclaimer, the plaintiff claims that an
application has been filed for correction of such recording in the portal, on
February 24, 2020.
151. The Trade Mark Registration Portal merely depicts a status report showing
the disclaimer which is qualified with the expression “not for legal use”. The
plaintiff also alleges that the disclaimer has subsequently been removed
20
from the portal. In ITC Limited v. Golden Tobacco Limited (supra) , the
Madras High Court recognised that such disclaimer recording was
erroneous.
152. Looking at the matter from the perspective of Section 124 of the TM Act,
even with regard to the alleged disclaimed trade mark, the court has to wait
for the outcome of the rectification application and final decision of the suit
will be subject to the said outcome. Thus, such question can only be
conclusively decided, even with regard to the sole disclaimer, at the final
hearing of the suit or, at least, till the correction application is finally
decided.
153. Even otherwise, if any stay/adjournment is granted in respect of the suit, it
does not debar any interlocutory order from being passed in favour of the
plaintiff, as per Section 124(5) of the TM Act. As such, it would be premature
at the injunction stage to apply the ratio laid down in the judgments relied
on by the appellant, as discussed above.
154. From a different perspective, even if we proceed on the premise that a
disclaimer has been recorded and no exclusive registration has been
separately sought by the plaintiff in respect of the word “Gold”, a question
20
ITC Limited v. Golden Tobacco Limited, reported at 2018 SCC OnLine Mad 2437
47
arises as to whether a descriptive or common component can be extracted
from a composite trade mark on the ground of the same having acquired
“secondary meaning” in respect of the plaintiff.
21
155. In Three-N-Products Private Limited (supra) , it was observed by this court
that a descriptive/common component cannot be extracted from a
composite registered mark to obtain exclusivity. In Sudarshan Seeds Pvt.
22
Ltd. (supra) , it was observed that a party has to accurately disclose the
precise marks which are registered to get interlocutory protection.
156. However, even going by the said proposition, in Pernod Ricard India
23
(supra) , the Hon’ble Supreme Court held that the court may identify the
‘prominent feature’ of a trade mark and even a generic term can be
monopolised if it has acquired a secondary meaning in respect of the
plaintiff.
157. Different High Courts of the country, in multiple judgments/orders, have
recognised that the plaintiff/ITC has acquired secondary meaning in the
word “Gold” due to open, continuous and extensive use since the year 1905.
Such cases are listed below:
I. ITC Limited v. Tapisserie Lifestyle Private Limited & Another, Hon’ble
Delhi High Court order dated March 24, 2022, CS(COMM) 667/2021
[Gold Flake v. Hash Gold];
21
Three-N-Products Private Limited v. Emami Limited, reported at 2008 SCC OnLine Cal 589
22
Sudarshan Seeds Pvt. Ltd. v. Vishal Krishi Products Pvt. Ltd., reported at 2017 SCC OnLine
Cal 16310
23
Pernod Ricard India (P) Ltd. v. Karanveer Singh Chhabra, 2025 , reported at SCC OnLine SC
1701
48
II. ITC Limited v. Golden Tobie Private Limtied and Others, Hon’ble Delhi
High Court order dated, February, 27, 2024, CS(COMM) 331/2022
[Gold Flake v. Gold Magic, Gold Touch, Gold Strike];
24
III. ITC Ltd. v. Pelican Tobacco Co. Ltd. (supra) ;
25
IV. ITC Limited v. Whole Leaf Tobacco Venture Pvt. Ltd (supra) ;
V. ITC Limited v. NTC Industries Limited, reported at 2015 SCC OnLine
Bom 4976 [Gold Flake v. National Gold Flake];
VI. ITC Limited v. Gold Step Tobacco Private Limited & Ors., CS(COMM) No.
146/2023 (Hon’ble Delhi High Court Order dated March 14, 2023) [Gold
Flake v. Gold Vimal];
VII. ITC Limited v. DAV Industries LLP, CS(COM) No. 60/2024 (Hon’ble Delhi
High Court order dated January 22, 2024) [Gold Flake v. Gold Frost,
Gold Fun];
VIII. ITC Limited v. Gold Step Tobacco Private Limited & Ors., CS(COMM) No.
124/2024 (Hon’ble Delhi High Court order dated February 8, 2024)
[Gold Flake v. Gold Step];
IX. ITC Limited v. STC Tobacco Pvt. Ltd. & Ors., CS(COMM) No. 182/2024
(Hon’ble Delhi High Court order dated February 29, 2024) [Gold Flake v.
Gold Falcon, Gold Flicker];
X. ITC Limited v. Elora Tobacco Company Ltd. & Ors., CS(COMM)
201/2024 (Hon’ble Delhi High Court order dated March 7, 2024) [Gold
Flake v. Gold Impact].
158. Acquisition of such secondary meaning has also been pleaded in the plaint.
24
ITC Ltd. v. Pelican Tobacco Co. Ltd., reported at 2025 SCC OnLine Del 8592
25
ITC Limited vs Whole Leaf Tobacco Venture Pvt. Ltd And Others, reported at AIR 2019 Cal
215
49
159. Insofar as the ‘artistic work’ claimed for the purpose of copyright in the
plaintiffs mark is concerned, although the appellant has contended that an
artistic mark prevailing since 1905 cannot be revived after it expired post-
efflux of 60 years, the plaintiff cites Section 14(c)(v) of the CR Act to argue
that the present marks are adaptations of the earlier artistic work, which is
permissible in law. In respect of the present artwork, one Meet Jain, it is
argued by the plaintiff, who is the author of the artistic work, is still alive
and, as such, the copyright subsists, as the moratorium of 60 years
commences only from the demise of the author.
160. It is validly argued by the plaintiff/respondent no. 1 that the said issue was
never raised by the respondent no. 1/plaintiff before the suit court, in which
case the plaintiff could very well have controverted such contention by citing
the above facts.
161. We agree with such argument of the plaintiff, since the said issue cannot be
raised for the first time before this court, sitting in appeal, particularly in
view of the defendant no. 1/appellant having got ample opportunity of
arguments in respect of the temporary injunction application and having
contested the same tooth and nail by filing written objection.
162. It may be noted here that the argument as to the artistic design attracting
the provisions of the Designs act, 2000 is not necessary to be gone into in
view of the above discussions, more so since Section 2(d) of the 2000 Act
specifies ‘articles’ to be capable of being made and sold separately. Cigarette
packaging, as contended by the respondent no. 1, is not such an article but
is only a part of cigarette/tobacco products and their packaging and is not
sold independently.
50
163. Hence, The plaintiff/respondent no.1 has made out a prima facie case for
claiming that the word “Gold” has acquired a secondary meaning in respect
of its products, and, thus, is an integral component of its trade mark.
(v) Whether any case of passing off/infringement has been made out
by the plaintiff on merits
164. Insofar as the merits of the injunction application are concerned, the
appellant’s argument as to difference of pricing of the products of the
plaintiff and the defendant no. 1 does not hold water, since such difference,
even if any, loses relevance in the reality of the market-place where, it is
often the practice that the retailers compromise a part of their profit-margin
to sell cigarettes at a lower price than available before other retailers. A
common purchaser, in usual course of affairs, might not bank much on
such difference of pricing to scrutinize the distinction between the two
products. Rather, such less pricing of the products of the defendants might
aggravate the deception, since the propensity of the customer would be more
in favour of leaning towards the less-priced packet, if deceptively similar to a
product already established in the market.
165. The appellant heavily relies on the COTPA, 2003 to argue that 85% of the
allegedly infringing trade mark comprises of a statutory image, which is
common for all products, including that of the plaintiff and, thus, a
comparison should be made only between the rest 15% of the mark of the
parties respectively.
51
166. Even going by the principle laid down in ITC Limited v. Crescendo Tobacco
26 27
Agency (supra) and Vikrant Chemico Industries (P) Ltd. (supra) , we have to
see the overall presentation and likelihood of misrepresentation in cases of
infringement and passing off.
167. With a limited space of only 15% left for placement of the actual mark, after
making way for the statutory image which covers 85% of the pictorial, the
possibility of confusion and deception is all the more accentuated and there
may be confusion in the mind of the common buyer even if there is slightest
similarity between the marks.
168. In the event the trade mark itself is comprised of the entirety of the packet,
it would be far easier for the customer to distinguish between it and a
different mark. However, by limiting the mark to a miniscule portion of the
image, the chance of distinguishing it from a deceptively similar mark is
considerably reduced; thus, the overall impression given to the customer in
reality, taking a pragmatic viewpoint, has to include the 85% statutory
image as well. When a purchaser buys a cigarette packet, it is the total
picture (including the statutory image) which he sees in its entirety, and no
normal person would separately scrutinize the actual mark. Such
proposition finds support in the judgments of ITC Limited v. Golden Tobacco
28 29
Limited (supra) , ITC Ltd. v. Pelican Tobacco Co. Ltd. (supra) and ITC
30
Limited vs Whole Leaf Tobacco Venture Pvt. Ltd (supra) .
26
ITC Limited v. Crescendo Tobacco Agency, reported at 2011 SCC OnLine Cal 518
27
Vikrant Chemico Industries (P) Ltd. v. Shri Gopal Engineering & Chemical Works (P) Ltd.,
reported at 2025 SCC OnLine Del 5562
28
ITC Limited v. Golden Tobacco Limited, reported at 2018 SCC OnLine Mad 2437
29
ITC Ltd. v. Pelican Tobacco Co. Ltd., reported at 2025 SCC OnLine Del 8592
30
ITC Limited vs Whole Leaf Tobacco Venture Pvt. Ltd And Others, reported at AIR 2019 Cal
215
52
169. The test in a passing off or infringement action is that of a “common man”,
who goes to the market without having a photographic memory of the exact
mark of the product intended to be purchased. Apart from the fact that
much of the population is colour-blind to different degrees, there may be
sufficient confusion, even for a person capable of distinguishing colours,
between the yellow and gold marks respectively of the products of the
defendant no. 1/appellant and the plaintiffs/respondent no. 1, more so, if
combined with some shade of red and carrying the word “Gold”, limited to
15% of the total mark.
170. The very nature of the product sold under the trade marks-in-question,
which is widely consumed in India, defines the section of the populace
which buys the same, which is quite universal, cutting across all strata of
society. The economic theory of Veblen Effect or “conspicuous consumption”
is not applicable to such a common product and it is not expected that the
buyer will necessarily be so discerning as to scrutinize and subtly
distinguish between the shapes of the devices or the background of the
mark. Hence, the distinction between the oval shape of the roundel device
of the plaintiff’s product and a rather linear background of the defendants’
product loses relevance at the ground-level when a purchaser actually goes
to the market to buy such a product. Even otherwise, the so-called
“discerning” buyers do not always purchase the products by themselves but
get it through their agents, who might not, in turn, be discerning enough to
distinguish between the two products.
171. On a visual comparison of the trade marks as well, we find sufficient
similarity between them. Thus, we do not find any illegality on the part of
53
the learned Single Judge which can amount to perversity or a gross error, in
coming to the conclusion that there is every chance of deception and
confusion in the mind of the purchaser between the marks of the appellant
and the respondent no. 1. The learned Trial Judge came to one of the
plausible conclusions and it is not for the appellate court to substitute its
own view for that of the learned Trial Judge simply because such view is
also plausible. For interference in an appeal, there has to be an error of law
or fact, which we fail to find in the present case.
172. Hence, we come to the conclusion that sufficient triable issues have been
raised by the plaintiff to be entitled to temporary injunction as granted by
the learned Single Judge.
173. Having held in favour of maintainability of the suit, we also have to consider
that the appellant has two further threshold hurdles to overcome.
174. First, the consideration in the instant appeal is confined to the preliminary
stage of grant of injunction, where a prima facie case, on the strength of
triable issues, is to be made out. Unlike most of the judgments cited by the
appellant, neither this Court nor the learned Single Judge are deciding the
suit or a connected appeal finally, upon trial on evidence, where the findings
would have a conclusive texture. For the purpose of a prima facie case,
sufficiently arguable issues have been raised by the plaintiff/respondent no.
1 in the instant case, justifying the grant of injunction.
175. Secondly, in an intra-court appeal, between two Benches of different
strengths of the same High Court, the appellate Bench has to be doubly
cautious. In the present instance, the learned Single Judge took one of the
54
plausible views on the materials him and we do not find any illegality, let
alone perversity, to justify interference with the same.
176. Thus, the high tests for interference governing an intra-court Letters Patent
appeal have not been satisfied by the appellant in the instant case.
177. Hence, the appellant fails to cross both the aforesaid preliminary tests.
178. In fine, we find no merits in the appeal in view of the above findings, since a
sufficient prima facie case of infringement and passing off has been made
out by the plaintiff. The other tests of grant of temporary injunction are also
satisfied in the light of the materials and pleadings before the learned Single
Judge.
179. Insofar as the cross-objection filed by the respondent no. 1 is concerned, we
do not find any merits in the same. By the impugned order, the learned
Single Judge passed orders in terms of prayers (b), (c), (d), (e), (f), (g) and (h)
of the notice of motion in GA 1 of 2025. Prayers (c) and (e) categorically
cover infringement of the plaintiffs’ rights in its registered trade marks.
Thus, the very premise of the cross-objection, that similar protection ought
to have been given as passing off in respect of infringement as well, is
misplaced. The learned Single Judge, by the impugned order, has granted
ample protection with regard to not only passing off but infringement of the
plaintiff’s trade mark and trade dress as well. Thus, there is no substance
in the cross-objection.
55
CONCLUSION
180. Accordingly, TEMPAPO-IPD No. 6 of 2025 is dismissed on contest, thereby
affirming the impugned judgment and order dated February 6, 2025, passed
in IA: GA-COM 1 of 2025 with IP-COM 12 of 2025.
181. Consequentially, GA-COM 2 of 2026 is also disposed of.
182. OCOT No. 7 of 2025 is also dismissed on contest.
183. There will be no order as to costs.
184. Urgent Photostat certified copies of this judgment, if applied for, be supplied
to the parties upon compliance of all formalities.
(Sabyasachi Bhattacharyya, J.)
I agree.
(Supratim Bhattacharya, J.)