The Plaintiff, ITC Limited, one of India\u2019s largest FMCG companies, acquired the trademark, \u201cGOLD FLAKE\u201d by way of an assignment from its predecessor-in-business, British American Tobacco Co. Ltd, in 1910. Currently, the Plaintiff is the proprietor of the trademark \u201cGOLD FLAKE\u201d, and its corresponding devices or
, trade dresses, and copyright.<\/p>\n
In October 2023, a market survey revealed that Defendant Nos. 1 to 7 as well as several unknown parties, impleaded as Defendant No. 8, \u2018John Doe\u2019 were involved in manufacturing, selling, offering for sale, advertising and supplying cigarettes under the marks \u201c(GOLD FALCON) “, “(GOLD FLICKER)
\u201d, \u201c(GOOD FILTER)
\u201d and \u201c(GOLD POWER)
\u201d. Aggrieved by the adoption of the marks similar\/identical to the \u2018Gold Flake\u2019 mark, the Plaintiff filed the suit seeking a permanent injunction to restrain the Defendants from using the impugned marks in respect of cigarettes. The grounds of the suit were infringement of the registered trademark and passing off of the Plaintiff\u2019s marks including the trade dress, packaging, label, colour combination, and copyright.<\/p>\n
The Delhi High Court found the Defendants\u2019 marks to be deceptively similar and nearly identical\/similar to the Plaintiff\u2019s marks which would amount to infringement and passing off of Plaintiff\u2019s trademarks and copyright. Further, the Court also restrained the Defendant No. 2 and 3\u2019s sale of cigarettes in India, under the trademark \u201cGOLD FLAKE\u201d, not originating from the Plaintiff as unauthorized products, constitutes infringement of the Plaintiff\u2019s rights under Section 29(6)(c) of the Trade Marks Act, 1999.<\/p>\n
An ex-parte ad-interim injunction was granted in favour of the Plaintiff, restraining the Defendants from various activities related to the impugned marks. Additionally, the application filed for ex-parte appointment of three Local Commissioners was granted. The Local Commissioners were directed to conduct a search of the Defendants\u2019 premises and seize products bearing the impugned marks and other materials\/ documents pertaining thereto. The Court also issued various directions to the Local Commissioners, including visiting premises of John Does\u2019, on information being made available and seizing impugned products, if any, found.<\/p>\n
Citation: ITC Limited vs STC Tobacco Pvt Ltd & Ors, High Court of Delhi, 29th February, 2024, CS(COMM) 182\/2024.\u00a0<\/em><\/p>\n Authored by Ms. Benita Alphonsa Basil, Trademark and Copyright Team<\/span><\/p>\n Reviewed and confirmed by Ms. Naika Salaria, Trademark and Copyright Team<\/span><\/p>\n The case note\/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.<\/p>\n If you have any questions, or if you wish to speak with an\u00a0IP expert\/attorney<\/a>, please reach us at:\u00a0contact@bananaip.com<\/a>\u00a0or 91-80-26860414\/24\/34.<\/p>\n","protected":false},"excerpt":{"rendered":" The Delhi High Court has restrained several parties from selling cigarettes using deceptively similar marks to ITC\u2019s Gold Flake brand, citing clear infringement and passing off. This decision underscores the judicial approach to protecting well-known trademarks in India.<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":180,"footnotes":""},"categories":[5495,6,11],"tags":[183,12126,486,5918,5,4456,1160,41],"class_list":["post-102217","post","type-post","status-publish","format-standard","hentry","category-case-reviews","category-intellectual-property","category-trademarks","tag-bananaip-counsels","tag-cigarette-trademarks","tag-delhi-high-court","tag-gold-flake","tag-intellectual-property","tag-itc-limited","tag-passing-off","tag-trademark-infringement-2"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/102217","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=102217"}],"version-history":[{"count":3,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/102217\/revisions"}],"predecessor-version":[{"id":144510,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/102217\/revisions\/144510"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=102217"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=102217"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=102217"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}Disclaimer<\/h4>\n