Delhi High Court: Plaintiff, ITC Ltd., proprietor of trade mark “GOLD FLAKE” and their corresponding trade dresses/devices/logos, filed the present suit seeking permanent injunction restraining defendants from using the trade mark “GOLD STEP” (‘impugned mark’) and “
”, “
” (‘roundel devices’) in respect of cigarettes on the ground of infringement and passing off of plaintiff’s trade mark and copyright. Sanjeev Narula, J., till the next date of hearing, restrained defendants from manufacturing, offering for sale, selling, displaying, advertising, marketing, using, exporting, printing, whether directly or indirectly, dealing in cigarettes under the trade mark “GOLD STEP” and impugned roundel device and/or any marks/packaging that were nearly identical/similar to plaintiff’s marks that would amount to infringement and passing off of plaintiff’s trade marks and copyright, and unfair competition.
Background
Plaintiff was one of the largest FMCG companies in the country with its cigarettes business dating back to the year 1910. The trade mark “GOLD FLAKE” was originally adopted by plaintiff’s predecessor-in-business on or about the year 1905 for use in relation to cigarettes, and subsequently, in 1910, it was assigned to plaintiff.
The present suit pertained to intellectual property rights of plaintiff in “GOLD FLAKE”, and the ‘roundel device’ associated with “GOLD FLAKE” i.e, “
”, “
”, and “
”. Plaintiff learned about defendants’ infringing activities when it came across twitter posts about raid conducted on 5-12-2023 and 6-12-2023 by the Central Goods and Service Tax Authority (‘CGST Authority’) where the goods under the brand “GOLD STEP”, “GOLD VIMAL” and “PARIS” worth 3.16 Crore of defendants were seized. Defendant 1, Gold Step Tobacco (P) Ltd. was the manufacturer and/or marketer of cigarettes bearing impugned marks. Defendants 2, 3 and 4 were directors of Defendant 1.
Comparison of defendants’ and plaintiff’s product
|
Packaging of Defendants’ Product “GOLD STEP” |
Packaging of Plaintiff’s Product “GOLD FLAKE” |
|
|
|
Analysis, Law, and Decision
The Court opined that defendants’ products were deceptively similar to plaintiff’s products. Defendants’ intention to imitate plaintiff’s products and packaging was manifest by adoption of impugned marks and roundel device which were structurally, phonetically, and visually similar to plaintiff’s marks. The Court opined that plaintiff made out a prima facie case in its favour and in case an ex-parte ad-interim injunction was not granted, plaintiff would suffer an irreparable loss and balance of convenience also lies in favour of plaintiff and against defendant.
Thus, the Court, till the next date of hearing, restrained defendants and any person acting on their behalf from manufacturing, offering for sale, selling, displaying, advertising, marketing, using, exporting, printing, whether directly or indirectly, dealing in cigarettes under the trade mark “GOLD STEP” and impugned roundel device and/or any marks/packaging that were nearly identical/similar to plaintiff’s marks that would amount to infringement and passing off of plaintiff’s trade marks and copyright, and unfair competition.
The Court appointed four Local Commissioners as plaintiff had contended that defendants were likely to remove all physical evidence or deny their involvement in the infringing activities. The Court stated that the Local Commissioners, along with representatives of plaintiff and its counsel, were permitted to enter upon the premises of defendants or any other location/premises that might be identified during commissions, in order to conduct the search and seizure.
The Court stated that the Local Commissioners should conduct search of the premises and seize products (including unfinished/semi-finished goods) bearing the afore-noted defendant’s impugned marks and roundel devices identical or similar to plaintiff’s afore-noted marks and labels and other materials/documents pertaining thereto. Since defendants were using different marks on outer packaging of the impugned products and identical roundel devices on the individual cigarette sticks, the Local Commissioner was permitted to open cigarette packs to inspect the logos/devices on the individual cigarette sticks.
The matter would next be listed on 11-7-2024.
[ITC Ltd. v. Gold Step Tobacco (P) Ltd., 2024 SCC OnLine Del 1603, Order dated 8-2-2024]
Advocates who appeared in this case :
For the Plaintiff: Mukul Rohatgi, Senior Advocate; Suhrita Majumdar, Debjyoti Sarkar, Afzal B. Khan, Amit Mishra, Mitakshara Goyal, Sharad Besoya, Advocates
