‘Gold’ has indelible association with ITC’s cigarettes: Delhi HC protects company’s 100+ year old trademark

The Delhi High Court first granted an interim injunction in ITC's favour and against the infringing companies, including Pelican Tobacco Co Ltd, in an order issued in March 2024.

ITC had also argued before the court that “cigarettes are not always sold in packs, but as loose sticks and the minuscule branding thereon is identical. (File)

The Delhi High Court Monday stepped in to protect the trademark of ITC Limited’s flagship cigarette product, Gold Flake, after the company accused a local brand of passing off cigarettes labelled as ‘Gold Fighter’ and ‘Gold Flame’ in a font, colour scheme, logo and packing similar to that of ITC’s.

The high court held that the “use of the word ‘GOLD’ has become indelibly associated” with ITC’s product, acquiring a “secondary meaning within the cigarette industry.” ITC has held the trademark of ‘Gold Flake’ since 1910.

The court had first granted an interim injunction in favour of ITC and against the infringing companies, including Pelican Tobacco Co Ltd, in an order in March 2024.

On Monday, Justice Tejas Karia held that the trademarks are “deceptively similar” with the “purpose of causing confusion in the mind of the customers to generate sales of the Infringing Products riding upon (ITC’s) goodwill…”

ITC had argued that the defendants have “replicated all essential features” of the ‘Gold Flake’ mark and label and the minor variation, substituting ‘K’ with ‘M’ to form ‘GOLD FLAME’ from ‘GOLD FLAKE’, “is a superficial change that does nothing to dispel confusion or deception.”

It had further accused the infringing companies’ adoption of the mark as “not innocuous but a deliberate act to ride upon the goodwill and reputation” of ITC’s marks “to create an injurious association in the minds of consumers that the infringing products are related to (ITC’s) products.”

ITC had also argued before the court that “cigarettes are not always sold in packs, but as loose sticks and the minuscule branding thereon is identical.” “A retailer might take advantage of this close similarity to sell the Infringing Products as opposed to the genuine cigarette to reap higher profits,” leading to initial interest confusion, ITC had submitted.

Story continues below this ad

On the other hand, the defendants had submitted that ITC is more than seven years late in filing the infringement suit, as ITC had been aware of Pelican’s products since 2017, when ITC had objected to Pelican’s trademark filing with respect to ‘Gold Flame’. It also accused ITC of attempting to “proclaim monopoly over common descriptive marks and elements common to tobacco, cigarette, etc.”

The defendants had also argued that “buyers in the tobacco market purchase cigarettes by name, minimising the possibility of confusion” and that frequent buyers are “reasonably well-informed”.