ITC Protects “Gold Flake” Brand: Court Halts Sale of Deceptively Similar Cigarettes

The Plaintiff, ITC Limited, one of India’s largest FMCG companies, acquired the trademark, “GOLD FLAKE” 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 “GOLD FLAKE”, and its corresponding devices Image showing logo for "Gold Flake" or Image showing logo for "Gold Flake", trade dresses, and copyright.

In October 2023, a market survey revealed that Defendant Nos. 1 to 7 as well as several unknown parties, impleaded as Defendant No. 8, ‘John Doe’ were involved in manufacturing, selling, offering for sale, advertising and supplying cigarettes under the marks “(GOLD FALCON) Image showing logo for "Gold Falcon"“, “(GOLD FLICKER) Image showing logo for "Gold Flicker"”, “(GOOD FILTER) Image showing logo for "Gold Filter"” and “(GOLD POWER) Image showing logo for "Gold Power"”. Aggrieved by the adoption of the marks similar/identical to the ‘Gold Flake’ 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’s marks including the trade dress, packaging, label, colour combination, and copyright.

The Delhi High Court found the Defendants’ marks to be deceptively similar and nearly identical/similar to the Plaintiff’s marks which would amount to infringement and passing off of Plaintiff’s trademarks and copyright. Further, the Court also restrained the Defendant No. 2 and 3’s sale of cigarettes in India, under the trademark “GOLD FLAKE”, not originating from the Plaintiff as unauthorized products, constitutes infringement of the Plaintiff’s rights under Section 29(6)(c) of the Trade Marks Act, 1999.

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’ 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’, on information being made available and seizing impugned products, if any, found.

Citation: ITC Limited vs STC Tobacco Pvt Ltd & Ors, High Court of Delhi, 29th February, 2024, CS(COMM) 182/2024. 

Authored by Ms. Benita Alphonsa Basil, Trademark and Copyright Team

Reviewed and confirmed by Ms. Naika Salaria, Trademark and Copyright Team


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