Delhi High Court: While hearing an interlocutory application filed under Order 39, Rule 4 of the Civil Procedure Code, 1908, for vacation of an order dated 13-3-2024, wherein the Court had granted ad interim injunction restraining the defendants from infringing upon the plaintiff, ITC’s registered trade mark ‘GOLD FLAKE’, the Single Judge Bench of Tejas Karia, J, held that the copying of trade dress while dealing with the same type of products amounts to passing off. Accordingly the injunction granted under the order dated 13-3-2024 was confirmed and made absolute by the Court.
Background
The plaintiff is engaged in the trade and manufacture of cigarettes under the trade mark ‘GOLD FLAKE’, 
Vide order dated 13-3-2024, an ad interim injunction had been granted in favor of the plaintiff restraining the defendants and their agents from manufacturing, selling or advertising and cigarettes bearing the impugned marks or any other marks deceptively similar to the plaintiff’s.
The instant application was filed seeking vacation of the order dated 13-3-2024.
Analysis, Law and Decision
The Court noted that the plaintiff’s marks have attained a distinctive character, serve as source indicators for the products provided by the plaintiff and help distinguish the plaintiff’s goods from others in the market. Due to extensive, continuous and prolonged usage of the mark by the plaintiff, the public at large commonly associates the mark ‘GOLD FLAKE’ with the plaintiff.
The Court further noted that the plaintiff’s marks and the impugned marks are deceptively visually and phonetically similar; the nature of the marks is similar; the consumer base and the class of consumers is also similar.
The Court also noted that even the trade dress of the defendant is almost identical to the plaintiff’s and such copying of trade dress while dealing with the same type of products amounts to passing off.
Furthermore, the Court noted that the in accordance with the Cigarettes and Other Tobacco Products (Prohibition of Advertisement and other Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003, a major portion of a box of cigarettes is covered by health hazards and warning to the consumers. So whatever little portion is left for the sellers of cigarettes to customize as per their marketing strategy becomes even more prominent. The Court opined that the stark similarity among competing sellers in the limited space available to them would increase the likelihood of confusion among the consumers of the competing products.
The Court observed that the word ‘GOLD’ has nothing to do with cigarettes and it was the plaintiff who had started using the word ‘GOLD’ with respect to cigarettes and has in fact acquired substantial goodwill and reputation. Additionally, the composite mark ‘GOLD FLAKE’ has attained the status of a ‘well-known’ trade mark vide ITC Ltd. v. Golden Tobacco Ltd., 2018 SCC OnLine Mad 2473.
The Court also stated that the defendant’s purpose of using the impugned marks is to cause confusion in the minds of the consumers and to be able to ride upon the goodwill of the plaintiff to generate sales. The Court further stated that there is no side-by-side comparison of the plaintiff’s product and the infringing product so the consumer may not comprehend the minute differences in trade dress or mark. Furthermore, cigarettes are not always sold in packs, but as loose sticks, and the miniscule branding thereon is identical. A retailer might take advantage of this close similarity to sell the infringing products as opposed to the genuine cigarette to reap higher profits. The Court opined that such initial interest confusion leads to infringement of the plaintiff’s marks and labels.
The Court further stated that, “This is a case of triple identity where the Plaintiff’s Marks and the Impugned Marks are identical, the product category is identical and the trade channel as also the consumer base is identical.” Therefore, the Court held that the plaintiff being the prior user and adopter of the mark ‘GOLD FLAKE’ is entitled to protection.
Accordingly, the injunction granted in favour of the plaintiffs vide order dated 13-3-2024 was confirmed and made absolute by the Court.
[ITC Ltd. v. Pelican Tobacco Co. Ltd., C.S.(Comm) No. 221 of 2024, decided on 24-11-2025]
Advocates who appeared in this case:
For the Plaintiff: Arvind Nigam, Arvind Nayar, Senior Advocates, Mamta Rani Jha, Ms. Shruttima Ehersa, Aiswarya Debdarshini, Agnish Aditya, Akshay Joshi, Sanyukta Kaushik, Advocates
For the Defendant: Sanjeev Bindal, Bharat Gupta, Krishna Nagri, G.S. Singh, Advocates