While upholding the temporary injunction granted in favour of ITC Limited, the Calcutta High Court has affirmed that Sections 28(3) and 30(2)(e) of the Trade Marks Act do not bar infringement or passing off actions where validity of the defendant’s registration is disputed. The Court clarified that Sections 28(3) and 30(2)(e) of the Trade Marks Act bar only infringement claims between registered proprietors of identical or similar marks, and do not apply to passing off actions.
The Court found that the defendant/appellant could not produce a registered user agreement under Section 48, the mandatory affidavit under Section 49, or genuine royalty payment documents. Further, the purported license was retrospective, and the royalty vouchers were unsigned, unstamped, and described as ‘legal expense’. The Court also pointed out that the disclaimer appeared only in one of ITC’s registrations, while at least three other similar marks carried no such disclaimer.
As multiple High Courts have recognised that ITC has acquired secondary meaning in the word ‘Gold’ through open, continuous, and extensive use since 1905, the High Court emphasised that with only 15% of cigarette packaging available for the actual trademark, even slight similarity between marks is likely to deceive the common purchaser. Accordingly, the overall impression, including the statutory image, must be considered in assessing deceptive similarity.
On the question of jurisdiction, the Division Bench comprising Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya observed that Clauses 12 and 14 of the Letters Patent operate in separate fields. Clause 12 deals with a single cause of action partly arising outside jurisdiction and requires prior ‘leave’, whereas Clause 14 deals with several causes of action, one of which lies outside jurisdiction, and requires only a ‘show cause’ followed by an order for joinder for trial. The Court held that under Clause 14, no leave is required before entertaining the suit or passing interim orders, and such show cause can be issued at any stage before trial commences. The Court further observed that both Clauses 12 and 14 pertain to territorial jurisdiction and not subject-matter jurisdiction, and an objection as to territorial jurisdiction must be taken at the earliest opportunity, which the defendant/appellant failed to do. The Court also noted that Section 134(2) of the Trade Marks Act and Section 62(2) of the Copyright Act, being non obstante provisions, permit institution of the suit where the plaintiff carries on business, and ITC’s registered office is in Kolkata.
On the maintainability of a suit against a registered proprietor/user, the Court observed that Sections 28(3) and 30(2)(e) of the Trade Marks Act bar infringement claims only between registered proprietors of identical or similar marks, and do not apply to passing off actions, which are registration-agnostic. The Court further observed that Section 124 of the TM Act explicitly recognises the maintainability of a suit for infringement even against a registered proprietor, where the plaintiff disputes the validity of the defendant’s registration, and sub-section (5) of Section 124 permits grant of interlocutory orders even during any stay of the suit.
On the right of user, the Court observed that the defendant/appellant failed to produce any document substantiating registration of the user right under Section 48 of the TM Act, or the mandatory written agreement and affidavit under Section 49. The purported license agreement was executed on July 29, 2022, but claimed retrospective use from April 1, 2021, which the TM Act does not permit. The royalty vouchers were unsigned, unstamped, unnumbered, and described payments as ‘legal expenses’ rather than royalty. The infringing packets bore the ‘R’ symbol against the appellant’s name, falsely suggesting he was the proprietor. Defendant no. 2 had independently applied for registration of similar marks, belying its claim of being a permissive user under defendant no. 4.
On the disclaimer of the word ‘Gold’, the Court observed that the disclaimer appeared only in respect of one of the plaintiff’s trademarks, while at least three other similar marks carried no such disclaimer. The Court further observed that even a generic or descriptive word can be monopolised if it has acquired a secondary meaning, and multiple High Court judgments have recognised that ITC has acquired secondary meaning in the word ‘Gold’ through open, continuous, and extensive use since 1905.
On the merits of passing off/infringement, the Court observed that under the COTPA, 2003, 85% of cigarette packaging is occupied by a statutory health warning, leaving only 15% for the actual trademark. With such limited space, even slight similarity between marks is likely to cause confusion in the mind of the common purchaser. The Court observed that the overall get-up, colour combination, layout, and use of the word ‘Gold’ in the defendants’ product were deceptively similar to the plaintiff’s ‘Gold Flake’ product, and the difference in pricing was immaterial since both products were sold through the same trade channels to the same set of customers.
Briefly, plaintiff, ITC Limited, filed a suit seeking injunction against the defendant/appellant, Pravin Kumar (proprietor of IAKA Global), and other defendants for alleged infringement and passing off of its well-known cigarette trademark “Gold Flake” and its associated trade dress. ITC contended that the defendants were using the mark “IJM Gold Stag” along with a deceptively similar get-up, colour scheme, and layout. The defendants’ trademark “IJM Gold Stag” was registered in the name of defendant no. 4 (IJM Cigarette Company Pvt. Ltd.) under Registration No. 2331406 (Class 34) dated May 11, 2012. The defendants’ business was carried on in Punjab, and the alleged infringement/passing off also occurred in Punjab. The learned Single Judge dismissed the defendant’s vacating application and partially allowed ITC’s temporary injunction application, granting injunction primarily on the ground of passing off. The defendant filed an appeal, and ITC filed a cross-objection against the refusal of injunction on the ground of infringement.
