Court Rules Suit Maintainable Despite Jurisdictional Objections; Affirms Secondary Meaning of "Gold" in Plaintiff's Mark, Denies Defendant's Claimed License Rights
In a significant trademark infringement and passing off dispute involving the cigarette brands "Gold Flake" and "IJM Gold Stag," the Division Bench of the Calcutta High Court on September 18, 2026, upheld a temporary injunction granted in favor of ITC Limited, affirming the maintainability of the suit and rejecting the appellant's challenge on multiple legal fronts.
The appellant, Pravin Kumar and associated defendants, had challenged the jurisdiction of the Calcutta High Court to entertain the suit, contending that the cause of action arose in Punjab and that the court lacked territorial jurisdiction without prior leave under Clause 14 of the Letters Patent. They further argued that being registered proprietors or users of a similar mark "IJM Gold Stag," they could not be sued for infringement by ITC, and raised issues on the validity of ITC's claim over the word "Gold," which ITC had allegedly disclaimed in some registrations. The appellant also denied any valid license permitting their use of the "IJM Gold Stag" mark.
Rejecting these contentions, the court carefully analyzed the interplay between Clauses 12 and 14 of the Letters Patent, observing that Clause 12 requires leave before entertaining suits where the entire cause of action arises outside jurisdiction, whereas Clause 14 involves joinder of several causes of action where only one arises outside jurisdiction. Since ITC's plaint disclosed part of the cause of action within Calcutta's jurisdiction and the plaintiff's registered office was in Kolkata, the court held that the Calcutta High Court had territorial jurisdiction under Section 134(2) of the Trade Marks Act, 1999, and Section 62(2) of the Copyright Act, 1957. The objection to jurisdiction was also waived by the appellant for not raising it at the earliest stage.
On the maintainability of the suit against registered proprietors or users of similar marks, the court distinguished between infringement claims based solely on registration rights and passing off actions based on common law rights. It held that while Sections 28(3) and 30(2)(e) of the Trade Marks Act bar infringement claims between registered proprietors of identical or similar marks, passing off actions remain maintainable even against registered proprietors or permitted users. Further, Section 124 of the Trade Marks Act allows suits challenging the validity of registered marks and permits interlocutory relief, including injunctions, even during the pendency of such disputes.
The appellant's claim to a license permitting use of "IJM Gold Stag" was found unsubstantiated. The court noted discrepancies including the absence of a registered user agreement, the questionable validity of purported license agreements executed after the alleged period of use, misleading packaging indicating the appellant as the registered proprietor, and dubious royalty payment vouchers. There was no credible evidence of valid permission from the registered proprietor to the appellant or intermediate entities.
Regarding the contested word "Gold," the court found that ITC had made out a prima facie case that "Gold" had acquired secondary meaning as a key feature of its "Gold Flake" trademark through extensive use since 1905. It rejected the appellant's reliance on disclaimers recorded in the Trade Mark Registry portal, noting these disclaimers applied only to certain registrations and had been subject to correction applications. The court referenced multiple prior judgments recognizing the secondary meaning of "Gold" in ITC's marks.
On merits, the court considered the overall impression created by the cigarette packaging, including the statutory health warnings that cover 85% of the packet area under the Cigarettes and Other Tobacco Products Act, 2003. It concluded that with only 15% of the packet available for distinctive marks, the likelihood of confusion and deception is heightened, emphasizing that consumers see the packet as a whole rather than dissect statutory and non-statutory portions.
The court dismissed the appellant's appeal against the temporary injunction and affirmed the order of the learned Single Judge granting interim protection. It held that the plaintiff had demonstrated a strong prima facie case on infringement and passing off and that the appellant had failed to establish valid permitted use of the impugned mark. The cross-objection filed by ITC seeking extension of injunction relief was also dismissed as unnecessary, given the ample protection already granted.
This judgment clarifies critical points of law on jurisdiction, the scope of infringement actions against registered users, the legal effect of disclaimers in trademarks, and the assessment of passing off in products subject to statutory packaging regulations. It reinforces the principle that prior extensive use and acquired secondary meaning can establish strong common law rights even in the face of conflicting registrations.
Bottom Line:
Trade Marks - Temporary injunction in cigarette packaging dispute - Suit for infringement and passing off held maintainable before Calcutta High Court - Clause 14 of Letters Patent requires show cause and order for trial, not prior leave for entertaining suit - Passing off action maintainable even against registered proprietor/registered user of similar mark - Plaintiff made out prima facie case that word "Gold" in "Gold Flake" had acquired secondary meaning and that defendant failed to establish valid permitted use of "IJM Gold Stag" - Interim injunction affirmed.
Statutory provision(s):
Letters Patent Clauses 12 and 14, Trade Marks Act, 1999 Sections 17, 28, 29, 30, 31, 48, 49, 62 (Copyright Act, 1957), 124, Cigarettes and Other Tobacco Products Act, 2003 (COTPA), Copyright Act, 1957 Section 14(c)(v), Designs Act, 2000 Section 2(d)
Pravin Kumar v. ITC Limited, (Calcutta)(DB) : Law Finder Doc Id # 2981054
