Authority: Calcutta High Court, Civil Appellate Jurisdiction (Bench of Hon'ble Mr. Justice Sabyasachi Bhattacharyya and Hon'ble Mr. Justice Supratim Bhattacharya)

Order Date: 18‑09‑2026

Case Overview

  • Parties: Plaintiff/appellant Pravin Kumar vs. Respondent No. 1 ITC Limited (and other respondents). The suit sought a temporary injunction alleging infringement of the trade mark and trade dress of ITC’s cigarette brand “Gold Flake” and passing‑off of the trade name “IJM Gold Stag”.
  • Procedural History: The Single Judge dismissed the appellant’s vacating application and partially granted a temporary injunction, primarily on the basis of passing‑off. The appellant filed this intra‑court appeal (TEMPAPO‑IPD No. 6 of 2025) challenging the injunction and the jurisdiction of the Calcutta High Court. The Supreme Court had earlier directed disposal within six months, a timeline later exceeded.
  • Key Allegations:
  • The defendants (ITC) alleged that the plaintiff’s use of “IJM Gold Stag” infringed the “Gold Flake” mark and its trade dress, and that consumers were likely to be deceived.
  • The appellant contended that the cause of action arose in Punjab, outside the territorial jurisdiction of the Calcutta Court, and that the Single Judge lacked inherent jurisdiction under Clause 14 of the Letters Patent.
  • The appellant also argued that the plaintiff’s disclaimer of the word “Gold” in its registrations barred any exclusive claim over that term (prosecution‑history estoppel) and that the plaintiff’s copyright on the trade dress had expired.
  • Statutory Provisions Discussed: Sections 28, 29, 30, 124 of the Trade Marks Act; Sections 62(2) of the Copyright Act; Section 134(2) of the Trade Marks Act; Clause 12 and Clause 14 of the Letters Patent; Section 120 of the Code of Civil Procedure; COTPA 2003 (85 % statutory health warning image); Sections 48, 49 of the Trade Marks Act; Section 15(2) of the Copyright Act; Designs Act 2000, Section 2(d).
  • Jurisdiction Analysis: The Court examined Clauses 12 and 14 of the Letters Patent. It held that leave under Clause 12 had been granted at the inception of the suit, and a show‑cause notice under Clause 14 had been issued and un‑answered, thereby satisfying the jurisdictional requirements. The Court rejected the appellant’s claim that the suit should be filed in Punjab, emphasizing that the plaintiff’s registered head office is in Kolkata and that a part of the cause of action arose within the Court’s territorial limits.
  • Maintainability of Suit: The Court interpreted Sections 28‑30 and Section 124 of the Trade Marks Act, concluding that a suit for infringement or passing‑off is maintainable even against a registered proprietor of a similar mark when the validity of the registration is contested. Section 124 permits interlocutory relief (including injunctions) despite any stay pending rectification proceedings.
  • Right of User: The appellant’s claim of a licence from the registered proprietor of “IJM Gold Stag” was rejected because no written licence complying with Sections 48 and 49 of the Trade Marks Act was produced. The licence agreements presented were deemed either retrospective, improperly described as “rent”, or fabricated (unsigned, unstamped vouchers, split payments to evade Income‑Tax provisions).
  • Disclaimer of “Gold”: The Court noted that the plaintiff’s disclaimer applies only to one registration; other registrations containing “Gold” lack a disclaimer. It also observed that the plaintiff has sought correction of the disclaimer (application filed on 24‑Feb‑2020) and that the status page now shows the disclaimer as “not for legal use”. The Court held that the issue of secondary meaning of “Gold” must be decided at trial, but the existence of a prima‑facie case was sufficient for injunction.
  • Passing‑off / Infringement Merits: The Court evaluated the visual similarity of the marks, the limited 15 % space available for the distinctive element after the statutory 85 % health‑warning image, and the likelihood of consumer confusion. It found that the plaintiff had raised sufficient triable issues to justify the injunction.
  • Cross‑Objection: The plaintiff’s cross‑objection to the injunction was dismissed as the Single Judge’s order already covered both passing‑off and infringement reliefs.

Final Outcome

  • The appeal (TEMPAPO‑IPD No. 6 of 2025) is dismissed on contest, affirming the Single Judge’s injunction order dated 6 Feb 2025 (IP‑COM 12 of 2025).
  • GA‑COM 2 of 2026 and OCOT No. 7 of 2025 are also dismissed on contest.
  • No order as to costs.
  • Certified copies of the judgment may be supplied upon compliance with formalities.

Topics: Trademark Infringement, Injunction