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ITC Gold Flake Dispute: Rules Trademark Suit Maintainable Against Registered User
A Division Bench of the has affirmed that an action for trademark infringement and remains maintainable even against a registered of a , provided the validity of that registration is challenged by the plaintiff.
The ruling came in an filed by Pravin Kumar against an earlier granted in favour of , the owner of the iconic cigarette brand Gold Flake . The Court dismissed the appeal, thereby upholding the injunction that restrains the appellant from using the mark IJM Gold Stag and its associated .
Gold Flake vs. IJM Gold Stag: The Battle Lines
The dispute arose when ITC alleged that Pravin Kumar and other defendants were selling cigarettes under the name “IJM Gold Stag” with packaging that mimicked the distinctive gold-and-red roundel device of Gold Flake, causing deception among consumers. A Single Judge of the High Court had granted interim relief, finding a case of . Pravin Kumar appealed, arguing that the Single Judge lacked , that ITC could not claim exclusive rights over the generic word “Gold” due to a before the , and that a suit for infringement cannot lie against a or of an identical mark.
Jurisdictional Hurdles Cleared
The appellant contended that no part of the arose within Kolkata and that leave under was mandatory before granting any interim relief. The Division Bench, however, noted that ITC’s registered office is in Kolkata, squarely bringing the suit within the ambit of and . Moreover, the Court found that the appellant had waived any territorial objection by failing to reply to a issued under Clause 14. “An objection as to has to be taken at the earliest possible opportunity,” the Bench observed, citing , which remains applicable even to proceedings.
Can a Registered User Be Sued? The Core Legal Question
One of the most significant issues addressed was whether create an against suing a or of a conflicting mark. The appellant argued that since “IJM Gold Stag” was registered, no infringement action could be maintained. Rejecting this, the Court explained that Section 28(3) merely prevents one from claiming an exclusive right against another “merely by registration,” but it does not bar a suit where the validity of the defendant’s registration is disputed. Critically, the Court pointed to Section 124 of the Act, which explicitly permits such suits and empowers courts to grant interlocutory injunctions even during the pendency of . “Sections 28 to 30 do not operate as a bar to filing a suit or grant of interlocutory orders; they merely debar a claim to an exclusive right of one against another, subject to Section 124,” the judgment states.
The Word ‘Gold’ and
The appellant heavily relied on ITC’s of the word “Gold” in its trademark registration application, invoking the . While acknowledging that a ordinarily prevents a party from claiming exclusivity over the disclaimed component, the Division Bench noted that even generic terms can be monopolised if they have acquired a through long and continuous use. ITC has been using “Gold” in connection with its cigarettes since , and multiple High Courts have recognised that the word has become inextricably associated with ITC’s Gold Flake brand. “The plaintiff has made out a case for claiming that the word ‘Gold’ has acquired a in respect of its products,” the Court held, adding that any in one registration does not affect rights flowing from other valid registrations held by the same proprietor.
COTPA’s 85% Rule: A Narrow Window for Deception
The appellant contended that under the , mandatory health warnings occupy 85% of the cigarette packaging, leaving only a 15% space for the actual mark. It argued that the court should compare only that 15% portion. The Bench disagreed, emphasising that a consumer sees the entire packet as a whole. “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,” the judgment reads. With such limited space, any similarity in the remaining part creates a heightened risk of confusion, the Court reasoned.
Key Observations from the Bench
- “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… however, by limiting the mark to a miniscule portion of the image, the chance of distinguishing it from a is considerably reduced.”
- “Even generic terms can be monopolised if they have acquired a in respect of the mark of a proprietor/user.”
- “The defendant no.1/appellant has lost his right to oppose an order of of the different causes of action for the purpose of trial under .”
- “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.”
Final Verdict: Injunction Upheld, Cross-Objection Dismissed
The Division Bench found no perversity or error in the Single Judge’s order and dismissed the appeal, affirming the against Pravin Kumar and other defendants. The Court also dismissed ITC’s cross-objection, clarifying that the impugned order already provided complete covering both and infringement of ITC’s registered trade marks and .
The ruling reinforces the principle that trademark registration does not create an impenetrable shield against infringement claims when the validity of the registration itself is challenged. For brand owners, it underscores the importance of establishing in descriptive or generic components to secure broader protection.
