Trademark infringement occurs when a competing mark creates a likelihood of confusion among consumers as to the source of goods; protection extends to trade dress when substantial similarities exist.

ORDER

1. This hearing has been done through hybrid mode.

I.A. 16907/2021 & I.A. 611/2022

2. The applications under Order XXXIX Rule 1 & 2 CPC and Order XXXIX Rule 4 CPC, being I.A. No.16907/2021 and I.A. No.611/2022, have been taken up for hearing. The competing products in this case are `GOLD FLAKE' of the Plaintiff and `HASH GOLD' of the Defendant.

3. The case of the Plaintiff is that it is the proprietor of the trade mark `GOLD FLAKE' which has been in use for more than a 100 years with respect to cigarettes. The trademark `GOLD FLAKE' is stated to have been assigned to the Plaintiff in 1910 and enjoys recognition in the market. The Plaintiff's rights over the trademark `GOLD FLAKE' have been recognized in various Courts. The Defendants are manufacturers and sellers of cigarettes under the brand name and trade dress `HASH GOLD'. The Plaintiff's case is that the trademark and trade dress of the Defendants' products is also a red-gold colour combination in the same style, get-up and colour scheme by the Plaintiff.

4. The two packagings are set out below:

5. An interim injunction has been granted in this matter, vide order dated 17th December, 2021. The operative portion of the said order is as under:

"24. After hearing, leamed Senior Counsel for plaintiff and on perusal of material placed on record, this Court finds that a prima facie case to grant ex-parte ad-interim injunction relief in favour of plaintiff against the defendants, is made out.

25. Accordingly, till further orders, defendants, their partners, proprietors, servants, agents, distributors, marketers, suppliers and all others in active concert or participation with them are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly, dealing in the infringing products, more particularly identified as products bearing the impugned label /trade dress and/or impugned mark - 'HASH GOLD' and/or any other mark/name deceptively similar to the plaintiffs registered trade marks "GOLD FLAKE" resulting in the infringement of the plaintiffs rights in the registered trademarks and further they are restrained from passing-off the impugned mark/lable/trade dress."

6. The submission of ld. Sr. counsel for the Plaintiff is that the Plaintiff's product is known by the customers as `Bada Gold/Gold Kings' and `Chota/Small Gold' cigarettes. The word `GOLD' in respect of cigarettes is associated exclusively with the Plaintiff. On the other hand, ld. Counsel for the Defendant submits that the word `GOLD' is generic in nature.

7. A perusal of the rival packaging and various features in the packaging would reveal that there are several identities and similarities between the Plaintiff's GOLD FLAKE product and the Defendant's HASH GOLD product.

• First, the use of the word `GOLD' which is a prominent feature of the Plaintiff's mark.
• Second, the Defendants' use of a red and gold ribbon device which is almost identical to the Plaintiff.
• Third, the golden packaging in which the cigarettes are sold is also identical.
• Moreover, even the flavors such as: PREMIUM BLEND, MINT, etc. are being imitated by the Defendant.

8. The most important fact is that the Defendants' catalogue which has been placed on record shows that internationally the Defendants are using the word `HASH' as a trademark for their products, in a black and red packaging, but in India they have chosen to add the word `GOLD' to the name of the product. Thus, there can be no justification for the Defendant to use a different packaging, trade dress and colour combination in India which is so closely imitative o