The Defendant cannot rely upon the disclaimer regarding usage of GOLD FLAKE contained in the Trademark registration certificate of the Plaintiff. The Defendant cannot seek protection just because the impugned label is a registered Trademark.

ABDUL QUDDHOSE, J.

1. These appeals filed by the plaintiff in the suit being C.S.No.801 of 2015 are against an order dated 07.12.2015, passed by the learned Single Judge, dismissing three interlocutory applications filed by the plaintiff in the said suit, being O.A.Nos.1069, 1070 and 1071 of 2015.

2. The appellant plaintiff who claims to be the proprietor of the registered trademark GOLD FLAKE filed the above mentioned suit against the respondent for inter alia a permanent injunction restraining the respondent from manufacturing, selling and distributing, advertising cigarettes or other allied and cognate goods which amount to passing off the goods of the respondent as the goods of the appellant plaintiff; a permanent injunction restraining the respondent from committing acts of copyright infringement by making substantial reproduction of the appellant plaintiff's copyright in the GOLD FLAKE labels by use of identical and / or deceptively similar colour scheme; damages and other consequential reliefs.

3. According to the appellant plaintiff, the respondent has adopted the words GOLD FLAKE and has copied the same hinge type pack as the appellant plaintiff with layout, colour scheme, design and get up identical to the appellant plaintiff's pack and infringed its trademark only to mislead consumers into believing that the impugned products are of the appellant plaintiff or that the cigarettes of the respondent have some connection with cigarettes of the appellant plaintiff and thereby trade upon the immense goodwill of the appellant plaintiff and the reputation and popularity of its products.

4. In the suit, three interlocutory applications namely, OA Nos.1069 of 2015, 1070 of 2015 and 1071 of 2015 were filed by the appellant plaintiff. O.A.No.1069 of 2015 was filed for an injunction against copyright infringement. O.A.No.1070 of 2015 was filed for an injunction restraining the respondent defendant from manufacturing, selling, distributing, advertising cigarettes or other allied cognate goods by infringement of the appellant plaintiff's registered Trademark in violation of the undertaking given in C.S.No.477 of 1990 and C.S.No.478 of 1990 and the consent decree passed in C.S.Nos.477 of 1990 and 478 of 1990 pending disposal of the suit. O.A.No.1071 of 2015 was filed for injunction restraining the respondent defendant from manufacturing, selling, distributing, advertising cigarettes or other allied cognate goods passing the same off as the goods of the appellant plaintiff.

5. The learned Single Judge dismissed all the three applications by a common order dated 07.12.2015, against which these appeals have been filed. Since the appeals arise out of a common order, they were heard together and are being disposed of by a common judgment.

6. Mr.P.S.Raman, learned Senior Counsel for the appellant plaintiff submitted that the appellant plaintiff is the prior and honest user of the trademark GOLD FLAKE. He submitted that the appellant plaintiff has continuously and extensively been using the mark GOLD FLAKE since 1905. The appellant plaintiff has secured multiple trademarks registration for the GOLD FLAKE mark. He drew the attention of this Court to the trademark registration certificates for the appellant plaintiff's label as well as the specific registration obtained under Section 17 of the Trademarks Act, 1999, for the GOLD FLAKE device which is a component of the appellant plaintiff's registered label.

7. Mr.Raman submitted that the dominant theme underlying the GOLD FLAKE trade dress for the purpose of the suit consist of the following:

(a)Presence of roundel device

(b)Use of red colour for the roundel device.

(c)The trademark GOLD FLAKE encased inside the roundel device.

(d)GOLD FLAKE written in black lettering.

(e)Use of golden-black-red colour combination.

8. Mr.Raman submitted that the respondent's brands are Panama, Chancellor and Viceroy. GOLD FLAKE brand never figured in the website of the respondent. The respondent started manufa