Registered trademark is not a shield against passing-off claims or interim injunctions, Calcutta High Court holds in ITC Gold Flake case

ITC Limited instituted a commercial suit seeking injunction against Pravin Kumar and other defendants for alleged infringement and passing off of its “Gold Flake” cigarette trade marks, trade dress and copyright through the defendants’ use of “IJM Gold Stag” and its associated packaging.

The learned Single Judge dismissed the defendant’s application for vacating the interim order and granted temporary injunction, primarily on the ground of passing off, while the plaintiff filed a cross-objection concerning the refusal of injunction specifically on infringement grounds.

The appellant challenged the order on the grounds of lack of territorial jurisdiction, absence of leave under Clauses 12 and 14 of the Letters Patent, maintainability of an infringement action against a registered proprietor or user, the alleged right to use “IJM Gold Stag”, the disclaimer of the word “Gold”, absence of deceptive similarity, and alleged expiry or invalidity of the plaintiff’s copyright.

The plaintiff contended that Clause 12 leave had been granted, that a Clause 14 show-cause notice had been issued and not opposed, that Section 134(2) of the Trade Marks Act and Section 62(2) of the Copyright Act conferred jurisdiction on the Calcutta High Court, and that the defendants had failed to establish a valid right of permitted use.

1. Whether the Calcutta High Court had territorial jurisdiction to entertain the suit and grant interim relief, particularly in view of Clauses 12 and 14 of the Letters Patent and the alleged absence of a part of the cause of action in West Bengal?

2. Whether a suit for infringement and passing off is maintainable against a registered proprietor or a purported permitted user of an identical or deceptively similar trade mark?

3. Whether the appellant established a valid right to use the “IJM Gold Stag” mark on the basis of permission or licence from its registered proprietor?

4. Whether the plaintiff could assert rights in the word “Gold”, notwithstanding the alleged disclaimer in some of its trade-mark registrations?

5. Whether the plaintiff established a prima facie case of infringement and passing off warranting temporary injunction?

6. Whether the plaintiff’s cross-objection seeking additional or distinct protection for infringement had merit?

The Court applied Clauses 12 and 14 of the Letters Patent, distinguishing the former—which requires leave where part of the cause of action arises outside the Court’s territorial jurisdiction—from the latter, which permits joinder of separate causes of action after issuance of a show-cause notice and an order for trial.

It relied on Sections 134(2) of the Trade Marks Act, 1999 and 62(2) of the Copyright Act, 1957, which permit suits for infringement and passing off to be instituted where the proprietor resides or carries on business, and Sections 120 and 21 of the Code of Civil Procedure concerning the applicability of jurisdictional provisions and timely objections.

Under Sections 28(3), 29, 30(2)(e), 31 and 124 of the Trade Marks Act, the Court held that registration may restrict an infringement claim based merely on competing registrations, but does not bar the institution of a suit or the grant of interlocutory relief where the validity of the defendant’s registration is disputed; Section 124(5) expressly permits interim orders during a stay.

Sections 48 and 49 require a valid and properly documented registered-user arrangement.

The Court further applied the principles that passing off is independent of registration, that a descriptive or generic term may acquire secondary meaning, and that the overall get-up and likelihood of confusion must be assessed from the perspective of the ordinary purchaser, relying, inter alia, on S. Syed Mohideen v. P. Sulochana Bai, Indian Performing Rights Society Ltd. v. Sanjay Dalia, PhonePe (P) Ltd. v. Resilient Innovations (P) Ltd., Parakh Vanijya (P) Ltd. v. Baroma Agro Product, Pernod Ricard India (P) Ltd. v. Karanveer Singh Chhabra and ITC Ltd. v. Golden Tobacco Ltd.

The Court held that jurisdiction was established because the plaint pleaded a part of the cause of action and a reasonable apprehension of infringement in West Bengal, and Clause 12 leave had in fact been granted.

Clause 14 did not require prior leave before entertaining the suit or granting interim relief; issuance of a show-cause notice was sufficient, and the appellant waived its objection by not responding to that notice or raising the objection before the Single Judge.

The plaintiff’s registered office was in Kolkata, and the defendants produced no material showing that the plaintiff maintained a subordinate office in Punjab; consequently, Sections 134(2) and 62(2) supported the Calcutta forum.

On maintainability, the Court construed Sections 28–30 and 124 together: even if the defendant relied on a competing registration, the plaintiff had specifically challenged its validity, bringing the case within Section 124(1)(b), and interim protection remained permissible under Section 124(5).

The appellant also failed to demonstrate valid permitted use because the alleged agreement was executed after the commencement of the claimed licence period, the licence documentation was deficient, the packets represented the appellant as proprietor through the “®” symbol, royalty records were unreliable, and the chain of permission through the other defendants was unsupported and internally inconsistent.

As to “Gold”, the Court held that any disclaimer in one registration could not automatically affect other registrations, that the status-page disclaimer was disputed and subject to rectification, and that the plaintiff had made out a prima facie case that “Gold” had acquired secondary meaning through extensive and longstanding use.

Finally, the Court found sufficient visual and structural similarity in the overall packaging, including the colour scheme, placement and presentation of the marks.

The mandatory statutory health warning covering 85% of cigarette packaging did not eliminate the likelihood of confusion; rather, the limited remaining space heightened the significance of similarities in the commercial get-up.

Given the interlocutory stage and the limited scope of appellate review, the Single Judge’s plausible assessment did not warrant interference.

The Court also dismissed the plaintiff’s cross-objection, holding that the injunctions already granted under the relevant prayers covered infringement of the plaintiff’s registered trade marks and trade dress.

TEMPAPO-IPD No. 6 of 2025, GA-COM 2 of 2026 and OCOT No. 7 of 2025 were accordingly disposed of/dismissed, with no order as to costs.