Calcutta High Court
Itc Limited vs Pravin Kumar And Ors on 20 June, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
(Intellectual Property Rights Division)
BEFORE:
The Hon'ble Justice Ravi Krishan Kapur
IP-COM/12/2025
IA NO: GA-COM/1/2025,
GA-COM/2/2025,
GA-COM/4/2025
ITC LIMITED
VS
PRAVIN KUMAR AND ORS
For the petitioner : Mr. S. N. Mookherjee, Senior Advocate
Mr. Ranjan Bachawat, Senior Advocate
Mr. Ratnanko Banerjee, Senior Advocate
Mr. Sarathi Dasgupta, Advocate
Mr. Naman Chowhdury, Advocate
Mr. ParitoshSinha, Advocate
Mr. K.K. Pandey, Advocate
Mr. Manosij Mukherjee, Advocate
Ms. Pooja Sett, Advocate
Mr. Aayush Sinha, Advocate
Mr. Bhavesh Garodia, Advocate
Ms. Sayani De, Advocate
Mr. Dipto Ghosh, Advocate
Mr. Teesham Das, Advocate
Ms. Mallika Bothra, Advocate
For the respondent no. 1 : Mr. Jishnu Saha, Senior Advocate
Mr. Debnath Ghosh, Senior Advocate
Mr. Sourojit Dasgupta, Advocate
Mr. Sudhakar Prasad, Advocate
Mr. Biswaroop Mukherjee, Advocate
Mr. N. Banerjee, Advocate
Mr. PradiptaBasu, Advocate
Mrs. Nanki Roy, Advocate
Judgment on : 20.06.2025
2
Ravi Krishan Kapur, J.:
1. This is a rolled up action complaining of infringement of trademark,
copyright and passing off.
2. GA-COM 1 of 2025 is an application seeking interim reliefs. GA-COM
2 is an application filed by the respondent no.1 seeking vacating of the
interim order dated 6 February 2025 read with order dated 7 February
2025 and for dismissal of GA-COM 1 of 2025. GA-COM 4 of 2025 is
an application seeking revocation of dispensation granted under
section 12A of the Commercial Courts Act, 2015. By consent of the
parties all these applications were heard analogously.
3. The petitioner is a reputed multinational company inter-alia engaged
in the manufacture, sale and distribution of cigarettes. The petitioner
is also the proprietor of a well-known trademark “GOLD FLAKE”,
GOLD FLAKE roundel devices and the attendant trade dress. The
petitioner has several other registrations in its favour which include
the word mark registration ‘GOLD FLAKE Hallmark’, ‘GOLD FLAKE
Ultima’, ‘GOLD FLAKE Century’ and ‘GOLD FLAKE Super Star’. In
addition, the petitioner has also several copyright registrations in
respect of the mark “GOLD FLAKE”. It is alleged that the petitioner
has been extensively using the mark “GOLD FLAKE”, ‘GOLD FLAKE
roundel devices’, the attendant trade dress uninterruptedly and
continuously since 1905. The sales turnover of the petitioner for
cigarettes under the mark GOLD FLAKE are in excess of thousands of
crores. The petitioner also claims that with the passage of time, the
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word “GOLD” has become exclusively associated with the petitioner’s
cigarettes. The petitioner has also obtained several registrations of the
device mark “GOLD FLAKE”. The details of all such registrations of
the trademark and copyright of the petitioner are morefully
enumerated in the petition.
4. The grievance in this suit is against the respondents selling cigarettes
under the impugned mark ‘GOLD STAG’ with the words ‘IJM’
appearing in miniscule font, the impugned device and the impugned
trade dress. It is alleged that through a web of companies and
associate concerns all acting in collusion and conspiracy, the
respondent nos. 1 to 9 are selling cigarettes under the mark ‘GOLD
STAG’. It is also alleged that the word “GOLD” is an essential and
distinct feature of the petitioner’s registered mark. The mark ‘GOLD
FLAKE’ as well as “GOLD” have also been recognised to have acquired
immense goodwill and distinctiveness in respect of cigarettes which
are exclusively attributable to the product ‘GOLD FLAKE’ belonging to
the petitioner. It is also alleged that the respondents acting as co-
conspirators have been working surreptitiously to sell counterfeit
cigarettes. All the principal respondents are inter-related and have
common shareholders, directors, associates and employees. The
respondent no.4 has obtained the impugned registration of the mark
‘GOLD STAG’ without any intention to use the same but merely to
trade by selling the right of use to others. In this background, the
petitioner complains of infringement, passing off, counterfeiting and
trafficking by the respondent nos.1 to 9 and claims protective reliefs
4
insofar as violations of its rights vis-a-vis ‘GOLD FLAKE’ are
concerned.
5. On behalf of the respondents, it is contended that the ad interim order
dated 6 February 2025, read with an order dated 7 February 2025, is
liable to be vacated on the ground that there has been non compliance
with Order 39 Rule 3 of the Code of Civil Procedure, 1908. The
respondent no.1 has not been served contemporaneously in terms of
Order 39 Rule 3. It is further contended that the ex parte order dated
6 February 2025 has been obtained by suppression of material facts.
The petitioner had suppressed the fact of registration in favour of the
petitioner under the brand name ‘IJM GOLD STAG’ as well as the
disclaimer attached to the petitioner’s trademark registration ‘GOLD
FLAKE’.
6. It is further contended that the registration in favour of the petitioner
is only in respect of the words ‘GOLD FLAKE’ and the petitioner can
claim no monopoly nor exclusivity in respect of the word ‘GOLD’. The
petitioner does not have any registration for the word mark GOLD’ per
se. In support of such contentions, the respondent no.1 relies on the
disclaimer in the petitioner’s registration and submits that no right
can be claimed in respect of ‘GOLD’. In any event, the word ‘GOLD’ is
laudatory in nature and commonly used in the tobacco industry. It is
also contended that there is no similarity of any kind whatsoever
between the impugned trade dress or device of the respondents and
that of the petitioner. In such circumstances, the application is liable
to be dismissed.
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GA 4 of 2025
7. This is an application seeking revocation of dispensation granted
under section 12A of the Commercial Courts Act, 2015. For
convenience, section 12A of the Act reads as follows:
12-A. Pre-litigation Mediation and Settlement.–(1) A suit, which does not
contemplate any urgent interim relief under this Act, shall not be instituted
unless the petitioner exhausts the remedy of pre-litigation mediation in
accordance with such manner and procedure as may be prescribed by rules
made by the Central Government.
(2) For the purposes of pre-litigation mediation, the Central Government may,
by notification, authorize– (i) the Authority, constituted under the Legal
Services Authorities Act, 1987 (39 of 1987); or (ii) a mediation service provider
as defined under clause (m) of Section 3 of the Mediation Act, 2023.
(3) Notwithstanding anything contained in the Legal Services Authorities Act,
1987 (39 of 1987), the Authority or mediation service provider authorized by
the Central Government under sub-section (2) shall complete the process of
mediation within a period of one hundred and twenty days from the date of
application made by the petitioner under sub-section (1): Provided that the
period of mediation may be extended for a further period of sixty days with the
consent of the parties: Provided further that, the period during which the
parties spent for pre-litigation mediation shall not be computed for the
purposes of limitation under the Limitation Act, 1963 (36 of 1963).
(4) If the parties to the commercial dispute arrive at a settlement, the same
shall be reduced into writing and shall be signed by the parties and the
mediator.
(5) The mediated settlement agreement arrived at under this section shall be
dealt with in accordance with the provisions of Sections 27 and 28 of the
Mediation Act, 2023.
8. It is no longer res integra that the provisions of section 12A of the Act
are mandatory in nature and no suit shall be instituted without
exhausting the requirement of Pre-Litigation Mediation or Settlement.
[Dhanbad Fuels Pvt. Ltd. vs. Union of India and Anr. 2025 SCC OnLine
1129 and Patil Automation (P) Ltd. vs. Rakheja Engineers (P) Ltd. (2022)
10 SCC 1]. The only exception is where the suit “contemplates any
6
urgent interim relief”. In Yamini Manohar vs. T.K.D. Keerthi, 2023 SCC
OnLine SC 1382, it has been held as follows:
10. We are of the opinion that when a plaint is filed under the CC Act, with a
prayer for an urgent interim relief, the Commercial Court should examine the
nature and the subject-matter of the suit, the cause of action, and the prayer
for interim relief. The prayer for urgent interim relief should not be a disguise
or mask to wriggle out of and get over Section 12-A of the CC Act. The facts
and circumstances of the case have to be considered holistically from the
standpoint of the petitioner. Non-grant of interim relief at the ad interim stage,
when the plaint is taken up for registration/admission and examination, will
not justify dismissal of the commercial suit under Order 7 Rule 11 of the
Code; at times, interim relief is granted after issuance of notice. Nor can the
suit be dismissed under Order 7 Rule 11 of the Code, because the interim
relief, post the arguments, is denied on merits and on examination of the
three principles, namely: (i) prima facie case, (ii) irreparable harm and injury,
and (iii) balance of convenience. The fact that the court issued notice and/or
granted interim stay may indicate that the court is inclined to entertain the
plaint.
11. Having stated so, it is difficult to agree with the proposition that the
petitioner has the absolute choice and right to paralyse Section 12-A of the
CC Act by making a prayer for urgent interim relief. Camouflage and guise to
bypass the statutory mandate of pre-litigation mediation should be checked
when deception and falsity is apparent or established. The proposition that
the Commercial Courts do have a role, albeit a limited one, should be
accepted, otherwise it would be up to the petitioner alone to decide whether
to resort to the procedure under Section 12-A of the CC Act. An “absolute and
unfettered right” approach is not justified if the pre-institution mediation
under Section 12-A of the CC Act is mandatory, as held by this Court in Patil
Automation [Patil Automation (P) Ltd. v. Rakheja Engineers (P) Ltd., (2022) 10
SCC 1 : (2023) 1 SCC (Civ) 545] .
9. Thus, a Court must be satisfied that camouflage and guise is not
being resorted to circumvent and bypass the statutory mandate of
Pre-Litigation Mediation. The limited window which is only available to
the Court to revoke leave granted under section 12A is where the
petitioner has deceptively and fraudulently sought to create urgency
where none exists. This would require to the Court to examine the
nature and subject matter of the suit, the cause of action and the
reliefs sought for in the plaint. In doing so, the Court must consider
the plaint holistically and from the stand point of the petitioner in
determining whether the plaint, documents and the facts indicate
7urgent interim reliefs. There can be neither deception nor falsity in
seeking such urgency.
10. In the facts of this case, the petitioner complains of violation of its
intellectual property rights. It is alleged that the petitioner has
promptly approached the Court by filing the present suit on 28
January 2025 only after coming across the infringing products in the
market and the corresponding facts in or about December 2024. By
an order dated 5 February 2025, this Court inter-alia admitted the
plaint and dispensed with the requirement under section 12A of the
Act. It is alleged in the plaint that though the respondent no.1 holds
registration for TM ‘IAKA MANBRO’ the same was not being used as a
mark. The petitioner alleges to have been unaware of the licenses
granted to the respondent no.1 by the respondent nos. 2, 3 or 4. The
petitioner also alleges to be in the dark as to how the respondent no.1
was claiming to be registered proprietor of the impugned mark. The
plaint discloses that the respondent no.4 was enjoying a trademark
registration of ‘IJM GOLD STAG’ and the petitioner has pleaded
invalidity of the same. The petitioner has alleged that the registration
being enjoyed by the respondent no.4 was not available in the public
domain and could not be filed alongwith the plaint. The respondents
are primarily group companies and associate concerns who have been
acting in concert in selling cigarettes under the impugned mark. The
petitioner also alleges that the infringing products per se do not
disclose any connection with the respondent no.4 and the exact
connection between the respondents was not easily ascertainable from
any of the documents in the public domain.
8
11. On behalf of the respondent no.1 it is alleged that the sequence of
events would demonstrate that there was no urgency in seeking
dispensation under section 12A of the Act and that the petitioner has
suppressed various relevant facts.
12. On a consideration of the plaint and the documents annexed, it
appears that there are sufficient materials in seeking dispensation
under section 12A of the Act. There is no material fact which has been
concealed or suppressed in the plaint. Significantly, there is nothing
relied on by the respondent no.1 to prove that the petitioner had
direct or actual knowledge of the impugned mark in the market and
the inter-relationship between the respondent nos. 1 to 9. Such
knowledge cannot be imputed on the basis of guesswork, surmises or
conjectures. This fact is of vital importance in ascertaining whether or
not dispensation granted is liable to be revoked or not. The petitioner
as dominus litis has pleaded sufficient urgency and a microscopic
analysis is not necessary (Chemco Plastic Industries Pvt. Ltd. vs.
Chemco Plast 2024 SCC OnLine Bom 1607). The length of delay or the
interval or time gap cannot be considered in isolation (Unique
Entrepreneurs and Finance Limited vs. Really Agritech Pvt. Ltd. and
Anr. 2025 SCC OnLine Cal 2426. The rival contentions insofar as the
merits of the case are concerned cannot also be gone into at this stage
of the suit. On a combined reading of the plaint and the documents in
support thereof, urgency has been sufficiently pleaded and there are
no grounds to revoke dispensation thereof.
13. The petitioner had also annexed the filing with the Registry of the
extract of “IJM GOLD RING” instead of “IJM GOLD STAG”. The
9petitioner has disclosed the fact that the respondent no.4 was
enjoying trade mark registration both in the plaint and the petition.
An inadvertent and bonafide non disclosure cannot be equated with a
deliberate and an intentional attempt to deceive the Court. In any
event, the documents alleged to have been suppressed would have no
material bearing insofar as dispensation under section 12A of the Act
is concerned. In this connection, reliance is placed on the decisions,
Unique Entrepreneurs and Finance Limited vs. Really Agritech Pvt. Ltd.
and Anr. 2025 SCC OnLine Cal 2426 is distinguishable. In that
decision, the material and relevant facts i.e. Kisan Mela and prior
dealings between the parties were germane factors as to knowledge
which amounted to gross suppression by the petitioner. The chain of
events suggests that regardless of the registration of the word mark
“IJM GOLD STAG” in favour of the respondent no.4, the exact
relationship by and between the respondents was not readily available
and the petitioner had been monitoring the activities of the
respondent nos. 1 to 9 in trying to ascertain the true relationship
between the parties. Thus, there is sufficient justification and
explanation. (Unreported decision of this Court in Nocil Ltd. vs.
Finorchem Ltd. and Anr. dated 15 May 2025 in IP-COM/25/2024). In
such circumstances, the application GA/4/2025 for revocation of
dispensation under section 12A of the Commercial Courts Act 2015 is
without merit and is dismissed.
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GA-COM/1/2025 and GA-COM/2/2025
14. Upon filing of this suit, by an ad interim order dated 6 February 2025,
this Court had granted ad interim orders of restraint and also directed
Special Officers to visit the offices of the respondents and file a Report.
Pursuant to the above direction, the Special Officers have filed their
reports which were taken on record.
15. The rival packaging of the parties are set out below:
IMPUGNED PETITIONER'S
PRODUCT PRODUCT
Front
Panel
Top Panel
Side
Panel
Cigarette
stick
Roundel
Devices
11
16. At the outset, the relevant sections of the Trade Marks Act, 1999 are
set out below:
17. Effect of registration of parts of a mark.–(1) When a
trade mark consists of several matters, its registration shall
confer on the proprietor exclusive right to the use of the trade
mark taken as a whole.
(2) Notwithstanding anything contained in sub-section (1), when
a trade mark–
(a) contains any part–
(i) which is not the subject of a separate application
by the proprietor for registration as a trade mark;
or
(ii) which is not separately registered by the
proprietor as a trade mark; or ;
(b) contains any matter which is common to the trade or is
otherwise of a non-distinctive character, the registration
thereof shall not confer any exclusive right in the matter
forming only a part of the whole of the trade mark so
registered.
28. Rights conferred by registration.–(1) Subject to the other
provisions of this Act, the registration of a trade mark shall, if
valid, give to the registered proprietor of the trade mark the
exclusive right to the use of the trade mark in relation to the
goods or services in respect of which the trade mark is registered
and to obtain relief in respect of infringement of the trade mark
in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under
sub-section (1) shall be subject to any conditions and limitations
to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade
marks, which are identical with or nearly resemble each other,
the exclusive right to the use of any of those trade marks shall
not (except so far as their respective rights are subject to any
conditions or limitations entered on the register) be deemed to
have been acquired by any one of those persons as against any
other of those persons merely by registration of the trade marks
but each of those persons has otherwise the same rights as
against other persons (not being registered users using by way
of permitted use) as he would have if he were the sole registered
proprietor.
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29. Infringement of registered trade marks.–(1) A
registered trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use,
uses in the course of trade, a mark which is identical with, or
deceptively similar to, the trade mark in relation to goods or
services in respect of which the trade mark is registered and in
such manner as to render the use of the mark likely to be taken
as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which
because of–
(a) its identity with the registered trade mark and the
similarity of the goods or services covered by such
registered trade mark; or
(b) its similarity to the registered trade mark and the
identity or similarity of the goods or services covered by
such registered trade mark; or
(c) its identity with the registered trade mark and the
identity of the goods or services covered by such
registered trade mark, is likely to cause confusion on the
part of the public, or which is likely to have an association
with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the
court shall presume that it is likely to cause confusion on the
part of the public.
(4) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which–
(a) is identical with or similar to the registered trade mark;
and
(b) is used in relation to goods or services which are not
similar to those for which the trade mark is registered;
and
(c) the registered trade mark has a reputation in India and
the use of the mark without due cause takes unfair
advantage of or is detrimental to, the distinctive character
or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses
such registered trade mark, as his trade name or part of his
trade name, or name of his business concern or part of the
13
name, of his business concern dealing in goods or services in
respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered
mark, if, in particular, he–
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the
market, or stocks them for those purposes under the
registered trade mark, or offers or supplies services under
the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or
in advertising.
(7) A registered trade mark is infringed by a person who applies
such registered trade mark to a material intended to be used for
labelling or packaging goods, as a business paper, or for
advertising goods or services, provided such person, when he
applied the mark, knew or had reason to believe that the
application of the mark was not duly authorised by the
proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of
that trade mark if such advertising–
(a) takes unfair advantage of and is contrary to honest
practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark
consist of or include words, the trade mark may be infringed by
the spoken use of those words as well as by their visual
representation and reference in this section to the use of a mark
shall be construed accordingly.
17. It is true that section 17 of the Trade Marks Act, 1999 confers
exclusive rights on the registered proprietor to use the trademark as a
whole and not in parts, particularly when the parts are non-distinctive
or purely descriptive. Even under Section 17(2)(b), such exclusivity
can only be asserted where part of the composite mark relied upon is
14
truly distinctive and not common to the trade; otherwise, no
exclusivity can be claimed over such matter. Thus, any assertion of
exclusivity over elements of a composite mark, unless supported by
distinctiveness not common to the trade and independently
established, cannot sustain a claim of statutory infringement. (Three-
N-Products Pvt. Ltd. vs. Emami Ltd. 2010 SCC OnLine Cal 134).
18. As a general principle, laudatory expressions–such as “Super,”
“Best,” “Gold,” or “Ultra” are often used to praise and describe the
quality of goods and are considered non-distinctive and common to
trade. Courts have held that such words, when forming part of a
composite mark, do not per se confer any exclusive proprietary right
on a party. Thus, in cases where such descriptive or laudatory
elements are part of a registered mark, registration does not grant
exclusivity over those elements alone under Section 17(2)(b).
(Vasundhra Jewellers Pvt. Ltd. vs. Kirat Vinodbhai Jadvani & Anr.
2022 SCC OnLine Del 3370, Vardhman Buildtech Pvt. Ltd. vs.
Vardhman Properties Ltd. 2016 SCC OnLine Del 4738, Soothe
Healthcare (P) Ltd. vs. Dabur India Ltd. 2022 SCC OnLine Del 2006,
Three-N-Products Pvt. Ltd. vs. Emami Ltd. 2010 SCC OnLine Cal 134).
19. Indisputably, repeated judicial pronouncements, suggest that the
word ‘GOLD’ has been found to be a prominent feature of the
petitioner’s mark also enjoying distinctiveness but does this fact per
se give then a monopoly on the word ‘GOLD’. (ITC Limited vs. Golden
Tobacco Limited 2018 SCC OnLine Mad 2437, ITC Ltd. vs. NTC Industries
Ltd. 2015 (64) PTC 244 (Bom); ITC Limited vs. Whole Leaf Tobacco
Venture Pvt. Ltd. and Ors. before the Hon’ble High Court at Calcutta,
15
Order dated 19/02/2018 in GA no. 3437 of 2018, CS No. 261/2018;
ITC Ltd. vs. Tapisserie Lifestyle Private Limited and Anr. before the
High Court at Delhi, Order dated 24/03/2022 in CS (Comm)
667/2021 and IAs No. 160907 of 2021 and 611 of 2022 and ITC
Limited vs. Golden Tobie Private Limited & Ors. before The High Court
at Delhi, Order dated 19/05/2022 in CS (Comm) 331/2022.
20. Time has its own role to play in intellectual property matters. The fact
that the mark of the petitioner was coined more than a century ago
and has been in open, continuous and uninterrupted use by the
petitioner is a factor which would be required to be taken into
consideration. It is also true that there is a disclaimer in some of the
registrations granted to the petitioner but does the ultimate consumer
have knowledge of the same? Though the petitioner has no
registration in respect of the word “GOLD” and proceedings are
pending before the Registry, nevertheless, the fact that trade rivals
have in a deliberate and calculated manner repeatedly sought to
encash on the word “GOLD” cannot be ignored. In this connection, a
tabular representation relied on by the petitioner is set out below:
Sl Suit Details Order Date Mark in Dispute No. 1. ITC Limited v. Golden Tobie 19.05.2022 GOLD MAGIC GOLD Tobacco Private Limited & Ors., TOUCH GOLD CS(COMM) No. 331/2022 STRIKE 2. ITC Limited v. Gold Step Tobacco 14.03.2023 Private Limited & Ors., CS(COMM) GOLD VIMAL No. 146/2023 3. ITC Limited v. DAV Industries LLP, 22.01.2024 GOLD FROST GOLD CS(COMM) No. 60/2024 FUN 4. ITC Limited v Gold Step Tobacco 08.02.2024 GOLD STEP Private Limited & Ors., CS(COMM) No. 124/2024 5. ITC Limited v. STC Tobacco Put. 29.02.2024 GOLD FALCON Ltd & Ors., CS(COMM) No. GOLD FLICKER 182/2024 6. ITC Limited vs. Elora Tobacco 07.03.2024 GOLD IMPAСТ Company Ltd. & CS(COMM) 16 201/2024 Ors., 7. ITC Limited v. Pelican Tobacco 13.03.2024 GOLD FIGHTER Company Limited & Ors., CS GOLD FLAME (COMM) No. 221/2024
21. It is true that the evidence relied on by the respondent no.1 suggests
that there is some use of the word ‘GOLD’ nevertheless, it may be
insufficient to be described as common to the trade. In this connection
a number of registrations and search reports which the respondent
no.1 has relied upon would demonstrate that most of the marks cited
were abandoned or have lapsed. In addition, several of those marks
did not pertain to cigarettes but different goods such as bidis, pan
masala etc. In any event mere registration or filing of an application
does not automatically translate into use in the trade. Some of the
packagings relied on by the respondent no.1 were merely depicted
though there was no evidence of the physical packets being available
in market. In addition, a number of packets did not even contain the
mandatory health warnings which is now compulsory in India. On the
other hand, though, under the law there can be only one mark, one
source or one proprietor there are a multitude of registrations for
GOLD formatives in class 34 which cannot be disregarded. In
addition, the respondent no.4 is enjoying registration of the word
mark ‘GOLD STAG’ bearing registration no. 2331406. Prima facie,
keeping the competing rights of the parties, the petitioner’s case of
infringement based exclusively on the word ‘GOLD’ and having a
secondary meaning is found to be unacceptable and will have to await
trial. (Parakh Vanijya Pvt. Ltd. v. Baroma Agro Product, (2018) 16 SCC
632).
17
22. On the other hand, the registration of a device or label entitles the
proprietor to protection against its unauthorized use by a rival in
trade when such use involves identical or deceptively similar trade
dress. The test in such cases continues to be the eye. A bare
examination of the impugned packaging would demonstrate that there
are striking similarities and resemblances between the two products.
In the two products, the word GOLD FLAKE and GOLD STAG are
written in black. The trademarks GOLD STAG and GOLD FLAKE are
in cased in a device. The colour Red had been used for the devices in
respect of both the marks. Both products contain ‘GOLD’, Black and
Red colour combination. In conclusion, the infringing products thus
depict strikingly essential resemblances in their get up, layout, colour
combination, use of devices and placement of features similar to the
petitioner’s trade dress.
23. The copyright registrations relied on by the respondent no.1 are also
invalid and contrary to the Copyright Act 1957 and the Rules framed
thereunder. The year of first publication is alleged to be 2013 showing
the mandatory graphical warning rule which had only came into force
on 1 April 2016. There is also no certificate produced by the
respondent no.1 as mandated under Rule 70(6) of the Copyright
Rules. There are also serious infirmities in the license from the
respondent no.2 to respondent no.1 which go to the root on the
genuineness and veracity of the documents in favour of the
respondent no.1. In any event, there has been no compliance with
section 30 read with section 30(A) and 19 of the Copyright Act 1957
which mandatorily requires any such agreement to be in writing. The
18
impugned mark is a slavish imitation and a crude copy of the
dominant theme underlying the mark of the petitioner and constitutes
infringement of the petitioner’s original artistic works which are
independently entitled to protection under the provisions of the
Copyright Act, 1957. The long, continuous and extensive use
alongwith the unique colour combination has become synonymous
with the product of the petitioner. Such similarities in get-up, colour
scheme, and presentation also constitute trade dress infringement,
inter alia under section 2(c) of the Copyright Act 1957. Prima facie, the
imitation of the trade dress and misleading overall impression created
by “IJM GOLD STAG” raises serious concerns of consumer confusion
and actionable infringement [Colgate Palmolive Co. v. Anchor Health &
Beauty Care Pvt. Ltd., (2003) 27 PTC 478 (Del)].
24. As stated hereinbefore, this is a combined action for infringement,
copyright, and passing off. To this extent, the decision cited by the
respondent no.1 that a suit registered against registered proprietor is
not maintainable is inapplicable. There is no absolute bar in the filing
of a suit for infringement against a registered proprietor. Moreso,
where the plea of invalidity of the defendant’s mark is raised.
(Unreported decision in Apricot Foods Pvt. Ltd.vs. Narendra Kumar
dated 21 December 2013 in Appeal No.378 of 2013 in Suit no.604 of
2010 passed by the High Court at Bombay and (2013) 5 Mah LJ 306).
In any event, a suit for passing off being a common law action is
always maintainable even against a registered proprietor. A perusal of
the impugned mark as a whole would suggest that there is every
likelihood or possibility of deception and confusion from the similarity
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of the two products. The test remains the Court’s perception of the
degree of resemblance between the marks. In this context, the price
variation between the two products does not aid the case of the
respondent no.1.[Kaviraj Pandit Durga Dutt Sharma vs Navaratna
Pharmaceutical AIR 1965 SC 980 at paras 28 and 29; Ruston &
Hornsby Ltd. vs. The Zamindara Engineering Co. (1969) 2 SCC 727 at
paras 3 and 7; Ramdev Food Products Pvt. Ltd vs. Arvindbhai Rambhai
Patel 2006 (8) SCC 726 at paras 91, 92, 94 and 97.
25. The connection and commonality between the directors and ex-
directors of the respondents also appears from a chart relied on by the
petitioner and is not disputed by the respondent no.1. For
convenience, the chart is set out below:
DIRECTORS AND EX-DIRECTORS OVERLAP CHART
Entity Directors Ex-Directors
RESPONDENT NO.2: INAYAT Balram, Vinod Kumar Kanhaiya Lal, Krishan Kumar
GLOBAL PRIVATE LIMITED
RESPONDENT NO.3: CHANDER Ex-director of D-4, D-5,
SHEIKHAR MARWAH Promoter of D5 as per India Mart
RESPONDENT NO.4: IJM Deepak Kumar, Sant Lal Ankush Marwaha, Krishan
CIGARETTE COMPANY Kumar, Chander Sheikhar
PRIVATE LIMITED Marwah
RESPONDENT NO.5: IJM Baldish Singh, Sanjeev Bhardwaj Ankush Marwaha, Krishan
ENTERPRISES PVT. LTD. Kumar, Chander Sheikhar
Marwah
RESPONDENT NO.7: NAGAHIA Kanhaiya Lal, Deepak Kumar Satish Kumar, Ankush Marwaha
ENTERPRISES
RESPONDENT NO.9: IJM Deepak Kumar, Balram Ankush Sharma, Sanjeev
FILTER CO. PVT. LTD. Bhardwaj, Krishan Kumar
26. In view of the above, there are sufficient materials at this stage to
conclude that the respondent nos. 1 to 9 are inextricably connected
with each other so as to form one economic unit. Prima facie, the
respondents are acting in concert where the respondent no.1 acts as a
mask for the wrongful activities of the remaining respondents. The
alleged licensing agreements in favour of the respondent no.1 are also
invalid, fabricated and an afterthought. One of the two agreements is
described as an agreement for rent. There is also no written agreement
20
for the period 1 April 2021 to 29 July 2022. In addition, the invoices
relied on pre-date the license agreements. No other respondent has
come before this Court and the respondent no.1 has attempted to
make submissions on their behalf for which no credence should be
given. It is obvious that the remaining respondents are waiting in the
wings with ulterior purpose. Prima facie, the dishonest and malafide
conduct of the respondent nos.1 to 9 are writ large in these
proceedings. In this backdrop, the case of trafficking and
counterfeiting would require further examination at the trial.
27. There is also no merit in the contention that the provisions of Order
39 Rule 3 of the Code of Civil Procedure have not been complied with.
In matters of such nature, it is common for a Court to extend the
period of compliance under Order 39 Rule 3 when appointing a
Special Officer or a Local Commissioner to carry out search and
seizure operations for preservation of evidence in order to obviate any
disappearance by the respondents. The intention behind such orders
is for service to be effected after conducting such search and seizure
operations. The Special Officer had served the respondent no.1
alongwith all suit papers on 28 February 2025 when the Special
Officer had visited the premises of the respondent no.1 in terms of the
ad interim order. The petitioner had also served the respondent no.1
by post on 1 March 2025 and the same was received on 5 March
2025. There has to be an inbuilt element of surprise in executing such
orders which are essential to prevent the respondents from destroying
evidence or avoiding liability. Thus, Courts do permit deferred service,
acknowledging that the object of justice would be defeated if the
21
respondent is given advance notice. This procedural safeguard
ensures that the respondents are not forewarned and thereby are not
in a position to fabricate, conceal, destroy or misappropriate
incriminating materials or evidence targeted by the Court’s
intervention. In view of the above, there has been sufficient
compliance under Order 39 Rule 3 of the Code of Civil Procedure,
1908 and there is no merit in this objection. [Autodesk Inc. and Anr.
vs. A.V.T. Shankardass and Anr. (2008) 105 DRJ 188], Time Warner
Entertainment Company v. RPG Netcom, 2007 (34) PTC 668 (Del.) and
Microsoft Corporation v. Kiran and Ors., 2007 (35) PTC 748 (Del)].
28. In such circumstances, the petitioner has been able to make out a
strong prima facie case on merits. The balance of convenience and
irreparable injury are also in favour of orders being passed as prayed
for herein. For the above reasons, GA/1/2025 stands allowed. There
shall be an order in terms of prayers (b), (c), (d), (e) (f), (g) and (h) of
the Notice of Motion in GA 1 of 2025. The ad interim orders dated 6
February 2025 read with the order dated 7 February 2025 stands
modified to the above extent. In view of the different reports filed by
the respective Special Officers, liberty is granted to the Special Officers
to make a formal prayer for discharge upon notice to all the parties.
Accordingly, GA/2/2025 and GA/4/2025 stand dismissed.
(Ravi Krishan Kapur, J.)