Trademark Infringement Action Maintainable Against Registered User: Calcutta HC

The Calcutta High Court has reinforced the protection of established brands against deceptive look-alikes, ruling that even a registered trademark does not provide an absolute shield against infringement actions if the registration itself is under challenge. In a high-stakes intellectual property battle, the Court upheld an injunction against the use of the 'IJM Gold Stag' label, finding it deceptively similar to the iconic 'Gold Flake' cigarette brand.

A Division Bench comprising Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya presided over the appeal challenging a Single Judge's order. The Court was tasked with determining whether a suit for infringement could be maintained against a defendant claiming rights under a registered trademark and whether the word 'Gold' had acquired a secondary meaning exclusive to the plaintiff.

Key Takeaways

Jurisdictional Flexibility in Letters Patent

Under Clause 14 of the Letters Patent, several causes of action can be joined even if some arise outside the Court's territorial limits, provided one cause of action falls within its jurisdiction.

No Absolute Immunity for Registered Users

Section 28 to Section 30 of the Trade Marks Act, 1999 do not create an absolute bar against infringement suits between registered proprietors when the validity of the rival registration is disputed.

Secondary Meaning of Generic Terms

Generic or laudatory terms like 'Gold' can be monopolized if a proprietor demonstrates open, continuous, and pervasive use that establishes a 'secondary meaning' in the eyes of the consumer.

Heightened Confusion in Restricted Packaging

Since 85% of tobacco packaging is occupied by statutory warnings under Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003, the remaining 15% space makes deceptive similarity even more likely to confuse the 'common man'.

Maintainability of Infringement Suits Against Registered Proprietors

The Bench analyzed the interplay between Sections 28, 29, and 30 of the Trade Marks Act, 1999. The Court clarified that while Section 28(3) protects registered proprietors from exclusive claims by each other, Section 124 of the same Act explicitly contemplates suits where the validity of a registration is questioned. The Court noted that the protection under Section 28(3) covers registered owners but does not necessarily extend a blanket immunity to permitted users if the underlying registration is challenged as invalid.

The Court, in its reasoning, observed: "Section 124 implicitly recognises the maintainability of a suit for infringement of a trade mark universally, without distinguishing between registered proprietors of an identical and nearly resembling trade marks and others... even if a competing registration is claimed in respect of the alleged infringing trade mark of the defendant, not only the institution of the suit but also the grant of interlocutory protective orders is permitted under Section 124."

The 85% Statutory Warning Factor

Addressing the impact of the Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003, the Court rejected the appellant's argument that comparisons should only be made for the 15% non-statutory space. The Court observed that a limited canvas for branding actually increases the risk of deception.

The Court has following directions:
"Accordingly, TEMPAPO-IPD No. 6 of 2025 is dismissed on contest, thereby affirming the impugned judgment and order dated February 6, 2025, passed in IA: GA-COM 1 of 2025 with IP-COM 12 of 2025. Consequentially, GA-COM 2 of 2026 is also disposed of. OCOT No. 7 of 2025 is also dismissed on contest."

Ratio

The Court declared that Sections 28 to 30 of the Trade Marks Act, 1999 do not operate as an absolute bar to interlocutory injunctions. Where a plaintiff pleads the invalidity of a defendant's registration under Section 124(1)(b), the Court retains the power under Section 124(5) to pass interlocutory orders, including injunctions, during the pendency of rectification proceedings or before the trial concludes. Furthermore, the test of deceptive similarity for tobacco products must account for the limited branding space caused by mandatory health warnings, which accentuates the likelihood of confusion.

Background

The dispute arose when ITC Limited filed a suit alleging that the defendants were infringing their 'Gold Flake' trademark and trade dress by using the name 'IJM Gold Stag' with a similar red and gold color scheme. The appellant, Pravin Kumar, contended that they were using a registered trademark and that the Calcutta High Court lacked territorial jurisdiction as the business was conducted in Punjab. They further argued that the word 'Gold' was generic and disclaimed by the plaintiff.

The Bench examined several precedents, including Pernod Ricard India (P) Ltd. v. Karanveer Singh Chhabra and ITC Limited vs Whole Leaf Tobacco Venture Pvt. Ltd And Others, to determine the scope of common law rights versus registration. The Court found that ITC had established a prima facie case of 'secondary meaning' for the word 'Gold' through decades of use. Referring to ITC Limited v. Crescendo Tobacco Agency, the Court held that the overall get-up and presentation must be assessed to prevent misrepresentation. Finding the 'IJM Gold Stag' packaging to be a plausible source of confusion for the common man, the Court affirmed the Single Judge’s decision to grant an injunction.

Case Details:
Case No.: TEMPAPO-IPD NO. 6 OF 2025
Neutral Citation: 2026:CHC-OS:400-DB
Case Title: PRAVIN KUMAR VS ITC LIMITED AND ORS
Appearances:
For the Petitioner(s): Mr. Tilak Kumar Bose, Sr. Adv., Mr. Soumya Ray Choudhury, Adv., Ms. Srishti Kaul, Adv., Mr. Suryaneel Das, Adv., Mr. Dhruv Chadha, Adv., Mr. Subha Pathak, Adv., Mr. Chiranjit Paul, Adv., Ms. Oindrila Ghosal, Adv.
For the Respondent(s): Mr. S.N. Mukherjee, Sr. Adv., Mr. Paritosh Sinha, Adv., Mr. K.K. Pandey, Adv., Mr. Monosij Mukherjee, Adv., Mr. Sauradip Banerjee, Adv., Mr. Ayush Sinha, Adv., Mr. Naman Chowdhury, Adv., Mr. Bhavesh Garodia, Adv., Mr. Viraj Nandy, Adv., Ms. Sonia Nandy, Adv., Ms. Sayani De, Adv.

Source: 2026 CaseBase(CAL) 2580