The Calcutta High Court has affirmed an interim injunction barring the manufacturer of IJM Gold Stag cigarettes from selling its product, concluding that the brand is deceptively similar to ITC Limited’s established Gold Flake cigarettes.
In a ruling delivered on September 18, a division bench comprising Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya dismissed an appeal filed by the IJM Gold Stag manufacturer. The order sustains a previous interim stay issued by a single-judge bench in favour of ITC in a trademark infringement and passing-off lawsuit.
Consumer Perception and Packaging Constraints
Addressing the legal benchmark for market confusion, the division bench observed that courts must evaluate trademark disputes from the perspective of an ordinary consumer who does not possess photographic recall of a product’s specific insignia. The judges highlighted that buyers view cigarette packaging in its entirety, including statutory elements, rather than examining individual design elements separately.
The bench further pointed out that statutory health warnings occupy 85 percent of cigarette packet surfaces in India, leaving only 15 percent of the area for a manufacturer’s proprietary branding. The court reasoned that confining the trademark to such a small fraction of the packaging significantly diminishes a consumer’s ability to distinguish between deceptively similar marks.
Additionally, the bench took note of varying degrees of colour blindness within the general population, stating that even individuals with full colour perception could easily confuse the yellow and gold colour schemes used by the two products. The court also observed that cigarettes are consumed widely across all strata of society, making the buying public universal and therefore susceptible to confusion arising from the visual resemblance of the two brands.
Dispute over Brand Name and Colour Scheme
ITC initiated the lawsuit after accusing the competitor of copying the trademark and trade dress of Gold Flake to make IJM Gold Stag resemble ITC’s product through similar naming conventions and overall get-up.
Senior advocate SN Mukherjee and advocate Paritosh Sinha, representing ITC, argued that the term “gold” constitutes a pragmatic feature of the company’s brand identity, having acquired a distinct secondary meaning through continuous and extensive use since 1905. Counsel for ITC maintained that the layout, colour combination, and arrangement of features showed a striking resemblance that made brand confusion inevitable given the limited branding space available on the packets.
In defence, senior advocate Tilak Kumar Bose and advocate Soumya Ray Choudhury, appearing for the appellant, contended that ITC held no separate registration for the generic word “gold” and could not claim an exclusive monopoly over it. The appellant’s counsel submitted that IJM Gold Stag featured a yellow-gold scheme with a vertical red ribbon, compared to ITC’s gold-brown packaging, and noted that ITC had no registered trademark over the red-and-gold colour combination.
Jurisdiction and Legal Findings
The appellant also raised a jurisdictional objection, arguing that because the firm conducted business exclusively in Punjab, the Calcutta High Court had no authority over the dispute.
The division bench rejected this argument, observing that ITC’s principal corporate office is situated within the jurisdiction of the Calcutta High Court, and no evidence had been submitted showing that ITC operated a subordinate office in Punjab.
Evaluating the merits of the case, the court determined that the term “gold” had indeed established a secondary meaning associated with ITC’s tobacco products, making it an integral element of the brand’s trademark. Upon conducting a visual assessment of both items, the bench concluded that there was sufficient resemblance to warrant maintaining the injunction.
