Bombay High Court: In a case revolving around an action for infringement of trade mark, copyright, and passing off, concerning the mark ‘GOLD FLAKE’ used for cigarettes, a Single Judge Bench of Sharmila U. Deshmukh, held that a prima facie case was made out for grant of ad‑interim relief and accordingly, issued temporary injunctions restraining the defendants from manufacturing, selling, or dealing in the counterfeit/fake ‘GOLD FLAKE’ cigarettes.
Background:
The plaintiff (‘ITC’) is the registered proprietor of the ‘GOLD FLAKE’ trade mark which was registered in 1942 and has been in continuous uninterrupted use since about 1905 through its predecessor in business who commenced the use of the trade mark ‘Gold Flake’ in respect of cigarettes. ITC is also the owner of the original artistic work in respect of the registered trade mark.
ITC’s counsel emphasized the reputation and goodwill of the mark, pointing to a sales turnover of Rs 40,186 crore for 2023‑2024. He submitted that Defendants 1 and 2 are the owners of various agricultural lands situated in Raigad, and one of those plots appears to have been sold by them to Defendant 3. ITC discovered the illegal manufacturing and counterfeiting of GOLD FLAKE cigarettes and filed a complaint. A raid was carried out by Karjat Police on 24-10-2024, and they found a sophisticated unit manufacturing GOLD FLAKE cigarette in the farmhouse on the said land, finished goods, raw material and machinery worth Rs 4.94 crores. An FIR was registered and a charge‑sheet followed on 02-05-2025.
ITC’s counsel further submitted that Defendants 1 and 2 were beneficial owners of the plot and the unit and were colluding with Defendant 3 to market counterfeit cigarettes. Defendant 4 was also identified as one of the chief conspirators in the report filed by the Raigad Police. It was further alleged that the illegal unit run by the defendants had no legal factory license and was set up secretly in the farmhouse, and it appeared that the impugned cigarettes were filled with mixed sawdust and chemicals.
The counsel further contended that despite police certification of destruction of the seized stock, but considering magnitude on which the counterfeit manufacturing was going on, it was likely that vast stockpiles remained, and as the manufacturing unit was in the vicinity of the Mumbai city, it was possible that the counterfeit cigarettes were available for sale and distribution within the jurisdiction of this Court.
Comparison of the rival products:
Analysis and Decision:
The Court held that the counterfeit cigarettes, filled with sawdust and chemicals, were hazardous to public health. The Court compared the products and observed that the defendants’ products were counterfeit GOLD FLAKE cigarettes. The charge-sheet filed by the police indicated sufficient evidence being found by the authorities regarding the counterfeit manufacture of the ITC’s products.
The Court opined that the proprietary right of ITC in the registered trade mark was prima facie demonstrated through the registrations and uninterrupted use since 1905. The reputation and goodwill of the mark were evident from the sales turnover and the leading presence in the cigarette manufacturing industry. The Court observed that the defendants could not raise any credible defence, and the counterfeit products were likely to cause damage to the reputation and goodwill of ITC.
The Court was convinced that any further delay would defeat the grant of ad‑interim relief, and therefore, issued temporary injunctions restraining the defendants from infringing the trade mark and copyright, passing off the impugned goods, and directing the disclosure of identities and inventories connected with the counterfeit unit.
The matter has been listed for further consideration on 10-12-2025.
[ITC Ltd. v. Abbas Mohammad Shaikh, Interim Application (L) No. 29298 of 2025, decided on 13-11-2025]
Advocates who appeared in this case:
For the Petitioner: Ravi Kadam, Senior Advocate a/w Rohan Kadam, Nimish Kothare, Nikhil Mutha, Ashwini Sonawane i/by Nanu Hormasjee & Co.