Statutory Health Warning On Cigarette Packs Cannot Be Excluded While Comparing Marks For Deceptive Similarity In Trademark Suit: Calcutta High Court
The Court upheld injunction against "IJM Gold Stag" in ITC's "Gold Flake" suit, holding that 85% COTPA health warnings cannot be excluded during similarity tests and registered users gain no protection under Sections 28(3) and 30(2)(e) for infringing marks.
The Calcutta High Court has dismissed an intra-court appeal challenging a temporary injunction restraining the use of the trade mark "IJM Gold Stag" on cigarette packaging, holding that when comparing two marks for deceptive similarity, a court cannot artificially exclude the 85% of the packaging occupied by the statutory health warning mandated under the Cigarettes and Other Tobacco Products Act, since the comparison must account for the pack as a whole rather than an isolated fraction of it.
Clarifying a distinct question of trade mark law, the Bench held that a registered permitted user of a rival, allegedly infringing mark gains no protection under Sections 28(3) and 30(2)(e) of the Trade Marks Act, since those provisions shield only users of the plaintiff's own registered mark; a suit for infringement against such a user remains fully maintainable, and interim relief may be granted even while the validity of the competing registration is under challenge.
A Division Bench comprising Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya observed, “In the event the trade mark itself is comprised of the entirety of the packet, it would be far easier for the customer to distinguish between it and a different mark. However, by limiting the mark to a miniscule portion of the image, the chance of distinguishing it from a deceptively similar mark is considerably reduced; thus, the overall impression given to the customer in reality, taking a pragmatic viewpoint, has to include the 85% statutory image as well. When a purchaser buys a cigarette packet, it is the total picture (including the statutory image) which he sees in its entirety, and no normal person would separately scrutinize the actual mark…”.
“With a limited space of only 15% left for placement of the actual mark, after making way for the statutory image which covers 85% of the pictorial, the possibility of confusion and deception is all the more accentuated and there may be confusion in the mind of the common buyer even if there is slightest similarity between the marks”, the Bench noted.
Senior Advocate Tilak Kumar Bose appeared for the appellant and Senior Advocate S.N. Mukherjee appeared for the respondent.
The suit was instituted by ITC Limited, proprietor of the cigarette brand "Gold Flake," in use since 1905, against the appellant and several other defendants, alleging that the trade mark and trade dress "IJM Gold Stag" infringed and passed off ITC's registered marks and copyrighted label.
The appellant claimed to be a permitted user of "IJM Gold Stag" under a licence traced through another defendant, said to derive its rights in turn from the registered proprietor of that mark. ITC disputed the entire chain of licences as fabricated and belated, and further pleaded that the registration relied upon by the defendants was itself invalid and wrongly retained on the register.
By an order dated February 06, 2025, the learned Single Judge dismissed the appellant's application to vacate an earlier ad-interim order and granted temporary injunction primarily on the ground of passing off, while declining injunction on the separate ground of infringement. Both the appellant, aggrieved by the grant of injunction, and ITC, aggrieved by the partial refusal on infringement, carried the matter in appeal and cross-objection respectively before the Division Bench. The appellant additionally challenged the Single Judge's jurisdiction, contending that the cause of action and the defendants' business were confined to Punjab and that no leave under Clause 14 of the Letters Patent had been obtained before interim relief was granted.
On jurisdiction, the Court held that leave under Clause 12 had in fact been granted at the inception, and that objection under Clause 14 stood waived since the appellant never responded to the show-cause notice issued in that regard nor raised the point before the Single Judge. On maintainability, the Court read Sections 28 to 30 together with Section 124 of the Act to hold that the statutory protection given to "registered proprietors" and "registered permitted users" against infringement claims applies only to users of the plaintiff's own mark, not to permitted users of a rival, allegedly infringing mark, and that a suit challenging the validity of a competing registration remains maintainable, with interim relief available under Section 124(5) regardless of any eventual stay.
On the disclaimer of the word "Gold" recorded against one of ITC's registrations, the Court held this could not affect ITC's several other undisclaimed registrations, and that in any event a generic term may acquire a monopolisable secondary meaning, as recognised in multiple orders of other High Courts in ITC's favour. On merits, the Court found the appellant's licence and sales documentation riddled with internal contradictions and held that the overall visual impression, not an artificial dissection of the mark from the statutory warning, governs the test of confusion for the ordinary purchaser.
Holding that the Single Judge had taken one of the plausible views warranting no appellate interference, the Court dismissed both the appeal and the cross-objection, affirming the injunction in its entirety, with no order as to costs.
Cause Title: Pravin Kumar v. ITC Limited and Ors. (Neutral Citation: 2026:CHC-OS:400-DB)
Appearances:
Appellant: Tilak Kumar Bose, Senior Advocate, Soumya Ray Choudhury, Srishti Kaul, Suryaneel Das, Dhruv Chadha, Subha Pathak, Chiranjit Paul and Oindrila Ghosal, Advocates.
Respondent: S.N. Mukherjee, Senior Advocate, Paritosh Sinha, K.K. Pandey, Monosij Mukherjee, Sauradip Banerjee, Ayush Sinha, Naman Chowdhury, Bhavesh Garodia, Viraj Nandy, Sonia Nandy and Sayani De, Advocates.