This case concerns a dispute between ITC Limited (the Plaintiff), a well-established manufacturer and trader of cigarettes, and Pelican Tobacco Co Ltd (the Defendants), who have adopted allegedly infringing marks and trade dress for cigarettes. The matter was adjudicated before the High Court of Delhi and the judgment was delivered by Hon'ble Mr. Justice Tejas Karia on 24th November 2025.
The Plaintiff ITC Limited has been using the trademark GOLD FLAKE since 1905 and has developed a long-standing reputation and goodwill in this mark related to cigarette products. The company claimed registrations for the trademark GOLD FLAKE and variants, along with original artistic trade dress and labels which have been granted copyright protection. The Defendants launched cigarette brands using deceptively similar marks such as GOLD FLAME and GOLD FIGHTER, along with packaging and labels closely resembling those of the Plaintiff. The Plaintiff contended that these acts amounted to trademark infringement, copyright violation, and passing off.
Procedurally, the Plaintiff filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure seeking an injunction against the Defendants’ use of these marks and trade dress. An ex-parte ad-interim injunction was granted on 13th March 2024. Subsequently, the Defendants filed an application under Order XXXIX Rule 4 seeking to vacate this injunction, which was contested by the Plaintiff.
The core dispute centered on whether the Defendants’ use of the marks GOLD FLAME and GOLD FIGHTER, along with similar trade dress, constituted infringement and passing off in violation of the Plaintiff's established trademark rights. The Plaintiff asserted that despite minor superficial changes in the marks, the overall presentation was confusingly similar and intentionally designed to ride on their goodwill. The Defendants argued that ‘GOLD’ is a generic and common descriptive word, denying any dishonest adoption or passing off. They asserted that their marks and trade dress were distinct enough, and that the Plaintiff’s delay in filing suit indicated acquiescence.
The Court undertook a detailed analysis of the legal principles governing trademark infringement and passing off. It observed that a trademark is an indicator of origin, serving to distinguish one's goods from those of others, and that this mark must possess a distinctive character. The Plaintiff’s mark GOLD FLAKE, used continuously since 1905 and registered since 1942, was found to have acquired distinctive character and goodwill recognized even in other judgments, including being recognized as a well-known mark by the Madras High Court.
The reasoning relied heavily on the resemblance between the Plaintiff's marks and the Defendants’ marks, including the dominant use of the word GOLD and similar packaging colors and labels. The Court rejected the Defendants’ defense that GOLD is a generic term, stating that the term in context had acquired secondary meaning specifically associated with the Plaintiff’s cigarettes. On the matter of passing off, the Court noted the utility of the “initial interest confusion” test, which considers confusion that occurs even before the purchase of the product is finalized. The Court recognized that cigarettes are often sold individually and by retailers, and imperfect recollection could easily mislead consumers into believing that the infringing products originated from the Plaintiff.
The Court referenced key Supreme Court decisions including Kaviraj Pandit Durga Dutt Sharma v. Navaratna Laboratories, Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., and Pernod Ricard India P Ltd. v. Karanveer Singh Chhabra to uphold that broad similarity in essential features suffices to establish infringement. It further held that delay in filing suit is not a valid defense when the opposing party has adopted marks dishonestly, citing Midas Hygiene Pvt. Ltd. v. Sudhir Bhatia and Hindustan Pencils Pvt. Ltd. v. India Stationery Products. The Defendants failed to provide a plausible explanation for the adoption of the marks, further supporting the conclusion of bad faith.
Balancing the equities, the Court found a strong prima facie case favoring the Plaintiff with the potential for irreparable harm if the injunction was denied. It emphasized that the restricted space available for cigarette packaging due to mandatory health warnings increased the likelihood of confusion caused by similar marks and trade dress.
The final decision was to confirm and make absolute the ex-parte ad-interim injunction granted earlier, restraining the Defendants from using the impugned marks, labels, and trade dress during the pendency of the suit. The application to vacate the injunction filed by the Defendants was dismissed.
This judgment reinforces the protection accorded to well-established trademarks and trade dress and clarifies that superficial alterations to evade infringement claims, especially in industries with limited branding space, will not be tolerated. The judgment also affirms the law relating to the acquisition of secondary meaning in descriptive terms and the doctrine of initial interest confusion.
Case Title: ITC Limited Vs Pelican Tobacco Co Ltd
Order Date: 24th November 2025
Case Number: CSCOMM 2212024
Neutral Citation: 2025:DHC:10358
Court: High Court of Delhi
Hon'ble Judge: Mr. Justice Tejas Karia
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Suggested Titles for Publication:
"Trademark Infringement and Passing Off: The ITC Limited v. Pelican Tobacco Co Ltd Case Explored"
"Protecting Well-Known Marks in Restricted Packaging Environments: A Study of the GOLD FLAKE Dispute"
"Initial Interest Confusion and Secondary Meaning in Trademark Law: Insights from ITC Limited v. Pelican Tobacco"
"The Doctrine of Passing Off and Trademark Infringement in the Tobacco Industry: Delhi High Court's Recent Landmark"
"Descriptive Marks and the Limits of Monopoly: The Legal Battle Over ‘GOLD’ in ITC Limited v. Pelican Tobacco Co Ltd"
Delhi High Court Confirms Injunction in ITC Limited vs Pelican Tobacco Co Ltd Trademark Dispute
New Delhi, November 24, 2025: In ITC Limited vs Pelican Tobacco Co Ltd & Ors (CSCOMM 2212024), the High Court of Delhi, presided over by Hon'ble Mr. Justice Tejas Karia, confirmed an ex-parte ad-interim injunction granted on March 13, 2024, restraining Pelican Tobacco from using marks like GOLD FLAME and GOLD FIGHTER, along with similar labels and trade dress for cigarettes.
ITC Limited, using GOLD FLAKE since 1905 with registrations dating back to 1942 and massive sales turnover exceeding ₹40,000 crores in FY 2023-24, accused the defendants of infringing its well-known trademark—recognized as such by the Madras High Court—and copying trade dress, leading to passing off. The court found the impugned marks deceptively similar visually and phonetically, especially in limited packaging space mandated by tobacco health warning laws, creating "initial interest confusion" among average consumers with imperfect recollection, including when cigarettes are sold loose.
Rejecting defendants' claims of delay, acquiescence, and "GOLD" being generic, the court held that ITC established secondary meaning in "GOLD" for cigarettes through extensive use, citing Supreme Court precedents like Kaviraj Pandit Durga Dutt Sharma v Navaratna Laboratories (AIR 1965 SC 980), Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd (2001 5 SCC 73), and Pernod Ricard India P Ltd v Karanveer Singh Chhabra (2025 SCC OnLine SC 1701). It ruled dishonest adoption overrides delay, with triple identity in marks, goods, and trade channels warranting protection; balance of convenience and irreparable injury favored ITC.
The court dismissed the defendants' bid to vacate the injunction (IA 30198/2024), making it absolute till suit disposal, emphasizing no need for actual damage proof in infringement cases.
Disclaimer: This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi.
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