Calcutta High Court Upholds Injunction Against ‘IJM Gold Stag’, Finds Similarity With ITC’s ‘Gold Flake’
The Calcutta High Court has upheld an interim injunction restraining the use of the “IJM Gold Stag” mark and its associated packaging, in proceedings brought by ITC Limited concerning its established “Gold Flake” cigarette brand.
A Division Bench comprising Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya dismissed the appeal filed by the manufacturer against the order granting interim protection to ITC. The judgment was delivered on 18 September 2026 in Pravin Kumar v. ITC Limited & Ors.
Dispute Over Brand Name and Trade Dress
The dispute arose from allegations that the “IJM Gold Stag” cigarette product adopted features resembling ITC’s “Gold Flake” cigarettes. ITC alleged infringement of its trademark rights as well as passing off through the adoption of a similar trade dress, packaging, colour scheme, layout and overall presentation.
The matter had earlier been considered by a Single Judge, who granted temporary protection in favour of ITC, primarily on the basis of passing off. The defendant subsequently challenged that order before the Division Bench. ITC also filed a cross-objection concerning the scope of the protection granted by the Single Judge.
Court Applies the Perspective of an Ordinary Consumer
A significant aspect of the judgment was the Court’s approach to assessing deceptive similarity from the perspective of an ordinary purchaser.
The Bench observed that a consumer purchasing a cigarette packet does not ordinarily examine every individual element of a trademark in isolation. Instead, the overall visual impression of the packet is likely to influence the purchasing decision.
The Court therefore considered the appearance of the competing products as a whole, rather than limiting the comparison to the individual words appearing on the packages. It found sufficient similarity between the competing marks and their overall presentation to sustain the interim protection.
Importance of the 85% Statutory Health Warning
The judgment also addressed a distinctive feature of cigarette packaging: the substantial portion of the packet occupied by the statutory health warning.
The defendant argued, among other things, that the respective colour combinations and brand elements were distinguishable. The Court, however, considered the practical reality that only a relatively small portion of a cigarette packet remains available for the distinctive branding of the manufacturer.
The Court noted that when approximately 85% of the packet is occupied by the mandatory warning, the remaining branding area becomes particularly significant. Consequently, the statutory warning could not simply be disregarded when assessing the overall appearance and possibility of consumer confusion.
Significance Attached to the Word ‘Gold’
Another issue concerned ITC’s use of the word “Gold.” The defendant contended that “Gold” was a common word and that ITC could not claim an exclusive monopoly over it.
ITC, on the other hand, argued that through longstanding and extensive commercial use, the word had acquired a secondary association with its cigarette products.
The Court accepted, at the interim stage, that “Gold” had acquired such secondary significance in relation to ITC’s products and treated it as an element of the overall trademark presentation. The Court nevertheless assessed the dispute on the basis of the complete visual and commercial impression rather than relying upon the word alone.
Arguments Regarding Jurisdiction
The appellant also questioned the jurisdiction of the Calcutta High Court, contending that his business activities were carried on in Punjab.
The Bench rejected that objection, noting that ITC’s principal office was situated within the Court’s territorial jurisdiction and that no material had been shown establishing a subordinate office of ITC in Punjab that would alter the jurisdictional position.
Court Maintains Interim Protection
After considering the competing submissions and the visual similarities between the products, the Division Bench found that ITC had established a sufficient prima facie case of infringement and passing off, along with the other requirements necessary for continuation of interim relief.
The appeal against the Single Judge’s order was consequently dismissed. The cross-objection filed by ITC was also dismissed, with the Bench recording that the protection granted by the earlier order already covered the relevant reliefs.
Broader Trademark Implications
The decision highlights several important principles relevant to trademark and passing-off disputes, particularly those involving consumer perception, trade dress and deceptively similar packaging.
The judgment demonstrates that similarity may be assessed from the perspective of the ordinary consumer and on the basis of the overall commercial impression created by competing products. It also underscores that individual branding elements cannot necessarily be examined in isolation where the overall presentation may create a likelihood of confusion.
For products with restricted packaging space because of statutory requirements, the Court’s reasoning also indicates that the limited area available for distinctive branding can become particularly important when comparing competing trade presentations.
Case: Pravin Kumar v. ITC Limited & Ors.
Date of Judgment: 18 September 2026
Court: High Court at Calcutta
Bench: Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya
Subject: Trademark Infringement, Passing Off and Trade Dress
Citation: 2026:CHC-OS:400-DB
