ITC Limited Vs. Pravin Kumar

Case Title: ITC Limited Vs. Pravin Kumar & Ors.:Date of Order: 20 June 2025:Case Number: IP-COM/12/2025:Name of Court: High Court at Calcutta:Name of Judge: Hon’ble Justice Ravi Krishan Kapur

Brief Facts:

ITC Limited, a well-known manufacturer of cigarettes under the trademark “GOLD FLAKE,” alleged that the defendants were selling counterfeit cigarettes under the brand “GOLD STAG” with deceptively similar packaging, layout, color scheme, and trade dress. ITC asserted long-standing use and copyright/trademark registrations over “GOLD FLAKE” and its associated packaging.

Nature of Dispute:

The dispute centers on trademark infringement, passing off, copyright infringement, and counterfeiting. ITC accused the defendants of coordinated action through interconnected entities to launch infringing products with the word “GOLD” and similar packaging. The defendants argued that “GOLD” is a common, laudatory term and no monopoly can be claimed over it.

Discussion by Judge:

Justice Ravi Krishan Kapur acknowledged that “GOLD” is a laudatory word but noted that the deceptive similarity between the packaging of “GOLD FLAKE” and “GOLD STAG” was prima facie evident. The judge held that ITC's trade dress had acquired distinctiveness through long and uninterrupted use. The court rejected the defendants’ plea to revoke dispensation under Section 12A of the Commercial Courts Act, finding that ITC had acted promptly and no suppression of facts was established. He also dismissed technical objections regarding service under Order 39 Rule 3 CPC and accepted that deferred service was justified due to the nature of the injunction and search orders.

Decision:

The Court allowed ITC’s application for interim injunction and upheld the ad interim orders restraining the defendants from using the impugned mark “GOLD STAG” or deceptively similar packaging. Applications filed by the defendants to vacate the interim order and revoke Section 12A dispensation were dismissed.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi.