Calcutta High Court Upholds ITC Injunction in Gold Flake Dispute, Finds 'Gold' Has Secondary Meaning

The Calcutta High Court has upheld an interim injunction protecting ITC's Gold Flake cigarette branding, finding a strong prima facie case that the word 'Gold' has acquired a distinctive secondary meaning in the commercial context of the brand.

Background

The dispute arose from ITC's suit alleging trademark infringement, copyright infringement and passing off against cigarettes marketed as 'IJM Gold Stag'. ITC alleged similarity in trade dress, colour scheme and packaging layout.

Legal issue and Court's reasoning

The defendant argued that 'Gold' is a generic or laudatory expression and relied on ITC's earlier disclaimer before the Trade Marks Registry to contend that the company could not claim a monopoly over the word.

The Division Bench treated the passing-off inquiry more broadly than ownership of an isolated dictionary word. It considered ITC's continuous and extensive use of Gold Flake since 1905 and the overall manner in which consumers encounter the mark and packaging.

Result and practical consequence

The Court also held that an action can remain maintainable against a registered permitted user of a deceptively similar mark where the validity of that registration is itself disputed.

The intra-court appeal against the interim injunction was dismissed.