ITC Limited Vs. Pravin Kumar & Ors.

In a recent judgment, the High Court of Calcutta addressed a dispute concerning infringement of trademark, copyright, and passing off, brought forth by ITC Limited (“ITC”). 

ITC, the proprietor of the well-known trademark GOLD FLAKE and its associated trade dress since 1905, brought an action against Pravin Kumar and eight other respondents (“Respondents”) for selling cigarettes under the mark GOLD STAG with nearly identical trade dress through an inextricably connected network of companies. After an ad interim injunction, granted in favour of ITC, the Respondents filed applications to vacate the order and to revoke the court's dispensation from mandatory pre-litigation mediation under Section 12A of the Commercial Courts Act, 2015.

ITC argued that owing to use of the word GOLD for over a century, it had become an essential feature of its mark and acquired a secondary meaning exclusively associated with its products. ITC contended that the Respondents were acting as co-conspirators and had been working surreptitiously to sell counterfeit cigarettes, which constituted infringement and passing off.

The Respondents contended that ITC could not claim a monopoly over the laudatory word GOLD, especially since ITC's own registrations contained disclaimers to that effect. They denied any similarity between the rival products' trade dress and device and argued that the suit was not maintainable against a registered proprietor of the GOLD STAG mark.

The Court ruled largely in favour of ITC and dismissed the application to revoke the dispensation from mediation, since ITC had sufficiently pleaded urgency. While the court held that ITC's claim of infringement based exclusively on the word GOLD was unacceptable at the prima facie stage and would require trial, it found a clear case of trade dress and copyright infringement. The court also noted that the year of first publication claimed by the Respondents was 2013, showing the ‘Mandatory graphical warning’ rule, which had only come into force on April 1, 2016, which goes to the root on the veracity of the documents in favour of the Respondents. The court found striking similarities in get-up, colour scheme, and presentation, constituting trade dress infringement, inter alia, under section 2(c) of the Copyright Act 1957. Finding a strong prima facie case and the balance of convenience in ITC's favour, the court confirmed the interim injunction and dismissed the Respondents' applications to vacate the order and revoke the mediation waiver.

ITC Limited Vs. Pravin Kumar & Ors. (Case Number: IP-COM/12/2025), judgement dated June 20, 2025

Read the judgement copy here