Summary
ITC Limited, the maker of Gold Flake cigarettes, and Pravin Kumar, trading as IAKA Global and marketing IJM Gold Stag cigarettes, were locked in a trademark infringement and passing off dispute before the Calcutta High Court. IAKA Global appealed a Single Judge’s temporary injunction, arguing among other things that one registered trademark owner cannot be sued for infringing another, and that ITC could not claim the disclaimed word ‘Gold.’ A Division Bench of the Calcutta High Court dismissed the appeal, holding the suit maintainable, upholding the injunction against Gold Stag cigarettes, and clarifying when a registered user, as distinct from a registered proprietor, can be sued for infringement. The ruling matters because it draws a rarely litigated line inside Sections 28 to 30 of the Trade Marks Act, 1999, on how far registration actually shields a competing mark’s users.
Background
A cigarette packet leaves little room for a trademark. Indian law reserves 85 per cent of every pack for a mandatory health warning, squeezing brand identity into a sliver of space too small for most buyers to study closely. Nearly four years after an interim order first stopped sales of a rival “Gold” cigarette brand, an intra-court appeal tested whether that sliver was enough to tell two similarly named products apart.
ITC Limited (“ITC”), whose Gold Flake cigarettes have carried the word “Gold” since 1905 and hold a trademark registration dated 16 May 2012, sued Pravin Kumar, trading as the sole proprietorship IAKA Global (“IAKA”), along with IJM Cigarette Company Private Limited, the registered proprietor of the “IJM Gold Stag” mark (Registration No. 2331406, dated 11 May 2012), and other defendants. ITC alleged that cigarettes sold under the “IJM Gold Stag” trade mark and trade dress infringed its Gold Flake registrations and amounted to passing off. A Single Judge dismissed IAKA’s application to vacate an earlier ad interim order and partially allowed ITC’s temporary injunction application, granting interim protection chiefly on passing off, by an order dated 6 February 2025, corrected on 18 February 2025 and finalised on 20 June 2025. IAKA appealed under the Letters Patent, while ITC cross-objected seeking equal protection on its infringement claim. The Supreme Court, in Writ Petition (Civil) No. 1273 of 2025, had asked that the appeal be disposed of within six months; arguments alone ran across nine hearing dates and closed beyond that window.
Issues
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- Did Clauses 12 and 14 of the Letters Patent, read with Section 134(2) of the Trade Marks Act, 1999 (“Trade Marks Act”), give the Calcutta High Court jurisdiction despite the defendants carrying on business in Punjab?
- Is a suit for trademark infringement maintainable under Sections 28 to 30 of the Trade Marks Act against a registered proprietor or a registered permitted user of a competing mark?
- Did IAKA hold a valid right of permitted use under Section 49 of the Trade Marks Act on the strength of its licence and royalty documents?
- Could ITC assert exclusivity over the word “Gold” in Gold Flake despite a recorded disclaimer on one of its registrations?
- Had ITC made out a prima facie case of infringement and passing off against the Gold Stag trade dress for the purpose of interim relief?
ITC’s Arguments
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- Argued that jurisdiction objections under Clauses 12 and 14 of the Letters Patent were never raised before the Single Judge and could not be raised for the first time on appeal, since IAKA had actively contested the interim application.
- Contended that under Section 28(3), Section 29(4) and Section 124 of the Trade Marks Act, an infringement suit is maintainable even against a person claiming registration once the plaintiff pleads invalidity of that registration.
- Submitted that IAKA’s licence and royalty documents were unreliable: the agreement post-dated the claimed licence period, royalty vouchers were split into sums under Rs. 10,000 apparently to avoid Section 40(A)(3) of the Income Tax Act, 1961, and the invoices ran through one individual common to several defendant companies.
- Argued that the disclaimer on “Gold” appeared on only one of ITC’s registrations and was marked “not for legal use” on the Trade Mark Registry’s own portal, and could not defeat the secondary meaning “Gold” had acquired since 1905.
- Contended that with the mandatory statutory warning under the Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003 (“COTPA”) occupying 85 per cent of every pack, only a sliver remains for a brand’s own mark, heightening the risk of confusion between two similarly coloured “Gold” marks.
IAKA’s Arguments
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- Argued that the suit should have been filed in Punjab, where the defendants carried on business and the alleged infringement occurred, and that no leave under Clause 14 of the Letters Patent had been obtained before interim relief was granted.
- Contended that Section 28(3) and Section 30(2)(e) of the Trade Marks Act bar an infringement claim between two registered proprietors, and that “IJM Gold Stag” was a validly registered and subsisting mark.
- Submitted that ITC had disclaimed the word “Gold” while seeking registration and was barred by prosecution history estoppel from later claiming exclusivity over it.
- Argued that the rival trade dresses were visually distinguishable in font, colour arrangement, descriptor wording and the presence of a roundel device, and that any similarity was confined to the generic word “Gold.”
- Contended that ITC’s copyright under the Copyright Act, 1957 (“Copyright Act”) in its label had expired 60 years after the work’s creation, and that the trade dress, being reproducible on packaging, should instead have been registered under the Designs Act, 2000 (“Designs Act”).
Court’s Analysis
Jurisdiction Without a Detour to Punjab
The court noted that Clause 12 of the Letters Patent requires leave before a suit is received where part of the cause of action arises outside the court’s ordinary jurisdiction, while Clause 14 requires only a show-cause before several causes of action are tried together. The court observed that leave under Clause 12 had already been granted at the suit’s inception, and that IAKA had waived any Clause 14 objection by ignoring the show-cause notice issued below. The court further found that since ITC’s registered office sits in Kolkata, Section 134(2) of the Trade Marks Act independently supported jurisdiction, with nothing on record placing a subordinate office of ITC in Punjab.
When Registration Isn’t a Shield
On the maintainability question at the centre of this Gold Flake trademark infringement dispute, the court held that Section 28(3) and Section 29(4) of the Trade Marks Act protect only registered proprietors and permitted users of the mark said to be infringed, not of the mark accused of infringing. The court reasoned that “registered permitted users of the infringing trade mark are not protected” from an infringement action, since reading the provisions otherwise would blur categories the statute keeps separate. The court also found that Section 124 of the Trade Marks Act allows a suit, and interim orders within it, to proceed even while a competing registration is disputed. In doing so, the court distinguished S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, noting that the Supreme Court there decided a fully tried suit between two registered proprietors, not an interim application where one party’s registration was itself under challenge.
A Licence Built on Sand
The court found that IAKA’s claimed status as a permitted user did not survive scrutiny. It noted that the licence it relied upon was executed after the period of use it purported to cover had already begun, that royalty vouchers were unsigned and recorded as “legal expenses” rather than royalty, and that one individual linked to several defendant companies signed both the licence and the invoices. The court stated that these circumstances raised a strong arguable case against any valid right of use, regardless of whether an infringement claim was otherwise barred.
Gold, Disclaimed but Not Disowned
The court accepted that a disclaimer ordinarily estops a proprietor from later claiming exclusivity, but observed that the disclaimer here appeared on only one of ITC’s several Gold Flake registrations and was itself marked “not for legal use” by the Trade Mark Registry. The court opined that a descriptive word can still be monopolised once it acquires secondary meaning, relying on Pernod Ricard India (P) Ltd. v. Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701, and found that continuous use of “Gold” since 1905 met that threshold, at least prima facie.
Fifteen Per Cent to Tell Two Golds Apart
On the merits, the court reasoned that COTPA’s mandatory warning, occupying 85 per cent of the pack, leaves only 15 per cent for a brand’s own mark, which increases rather than reduces the likelihood of confusion for an ordinary buyer. The court also found that price differences between the two products carried little weight in a market where retailers routinely discount to compete. On this basis, the court held that the Single Judge’s assessment disclosed no error warranting interference in an intra-court appeal, and that a sufficient prima facie case of Gold Flake trademark infringement and passing off had been made out.
Findings
In view of the observations and the arguments presented by both the parties, the Calcutta High Court held that:
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- The suit was validly instituted before the Calcutta High Court, jurisdiction under Clause 12 of the Letters Patent having been granted at inception and any Clause 14 objection having been waived.
- A suit for trademark infringement is maintainable against a registered permitted user of an accused mark, even though it is not maintainable against a registered proprietor or permitted user of the mark said to be infringed.
- IAKA had not established a valid right of permitted use over the “IJM Gold Stag” mark, given the inconsistencies in its licence and royalty documents.
- ITC had made out a prima facie case that “Gold” had acquired secondary meaning in its Gold Flake mark, notwithstanding the disclaimer recorded against one registration.
- The Gold Stag trade dress was prima facie deceptively similar to Gold Flake, and the Single Judge’s temporary injunction was affirmed in full, with ITC’s cross-objection dismissed.
Case Citation: Pravin Kumar v. ITC Limited and Others, TEMPAPO-IPD No. 6 of 2025 with GA-COM 2 of 2026 and OCOT No. 7 of 2025, High Court at Calcutta, decided on 18 September 2026. Available at https://indiankanoon.org/doc/102389657/.
Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels