Bombay High Court Temporarily Restrains Sale And Production Of Fake "Gold Flake" Cigarettes
The Bombay High Court was considering an Interim Application seeking injunction on the ground that the use of the counterfeit products is likely to cause damage to the reputation and goodwill.
The Bombay High Court has granted a temporary injunction against the manufacturing and sale of fake 'gold flake' in copyright and trademark infringement suit filed by ITC Limited.
The Court was considering an Interim Application seeking injunction on the ground that the use of the counterfeit products is likely to cause damage to the reputation and goodwill.
The bench of Justice Sharmila U. Deshmukh held, "....a strong overwhelming prima facie case has been made out for grant of ad-interim relief in terms of prayer clauses (a) to (d), which read as under: “a. Pending the hearing and final disposal of the Suit, a temporary Order and injunction restraining the Respondents/ Defendants, their partners, associates, proprietors, servants, agents, distributors, marketers, suppliers, licensees, assigns, and all others in active concert or participation with them from manufacturing, selling, offering for sale, advertising, directly or indirectly, and/or dealing in any manner the Impugned Cigarettes (as depicted in paragraph 10 above) and/or any other cigarettes/tobacco bearing any identical and/or deceptively similar mark so as to infringe upon the Applicant's/ Plaintiff's registered GOLDFLAKE trademarks....."".
The Applicant was represented by Senior Advocate Ravi Kadam.
Facts of the Case
The Plaintiff, a registered proprietor of the trade mark “GOLD FLAKE" which was registered in the 1942 and has been in continuous uninterrupted use of the Plaintiff. The “GOLD FLAKE" trade mark as well as the derivative marks were stated to be highly reputed amongst trader and consumers and the Plaintiff’s products which are cigarettes are also exported globally.
Senior Counsel for the Plaintiff submitted that in or about 1905, the Plaintiff’s through its predecessor in business commenced the use of the trade mark “Gold Flake” in respect of cigarettes and had obtained trade mark registration
He submitted that the Plaintiff is also owner of the original artistic work in respect of the registered trade mark and in order to demonstrate the reputation and goodwill, he pointed out to the sales turnover which for the year 2023-2024 was Rs.40,186 Crores. He submitted that the Defendant Nos.1 and 2 are the owners of various agricultural lands situated in Raigad and one of those plots appears to have been sold by Defendant Nos.1 and 2 to Defendant No.3.
He submitted that the Karjat Police carried out a raid on October 24, 2024, upon a complaint which was filed by the Plaintiff in respect of the illegal manufacturing and counterfeiting of GOLD FLAKE cigarettes. During the raid, the Police found sophisticated unit manufacturing counterfeit GOLD FLAKE cigarettes in the farmhouse on the said land, finished goods, raw material and machinery worth Rs. 4.94 Crores and seized the same. He submitted that accordingly, FIR was registered under the various provisions of the Bharatiya Nyaya Sanhita, 2023.
Reasoning By Court
The Court noted that upon prima facie comparison of the rival products, it is evident that the Defendants’ products are counterfeit GOLD FLAKE cigarettes.
"The fact that charge-sheet has filed by the Police indicates sufficient evidence being found by the police authorities as regards the counterfeit manufacture of the Plaintiff’s products. The Defendants cannot have any defence considering the raid by the police authorities and the evidence which has led to the filing of the charge-sheet. The proprietary right of the Plaintiff in the registered trade mark is prima facie demonstrated from the registrations which are placed on record and the user which is since the year 1905. The reputation and the goodwill of the Plaintiff in the registered trade mark is prima facie evident from the sales turnover and the leading presence of the Plaintiff in the cigarette manufacturing industry, requires no enforcement. The products being counterfeit products, the use of the counterfeit products is likely to cause damage to the reputation and goodwill of the Plaintiff", the Court held.
It thus ordered for the continuation of the ad-interim relief granted earlier till the next date.
The matter was accordingly listed for December 10, 2025.
Cause Title: ITC Limited v. Abbas Mohammad Shaikh
Appearances:
Applicant- Senior Advocate Ravi Kadam, Advocate Rohan Kadam, Advocate Nimish Kothare, Advocate Nikhil Mutha, Advocate Ashwini Sonawane
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