Pravin Kumar v. ITC Ltd. & Others

Calcutta High Court   •   18 September 2026   •   TEMPAPO-IPD No. 6 of 2025 with OCOT No. 7 of 2025
Case Summary
The Calcutta High Court upheld an interim injunction in the Gold Flake–IJM Gold Stag dispute, finding a prima facie case of trademark infringement and passing off. The comparison of trade dress must be made from the standpoint of an ordinary consumer and on the overall visual impression of the competing packaging.
Coram: Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya
Area of Law: Intellectual Property Law — Trade Marks, Passing Off, Trade Dress, Deceptive Similarity & Interim Injunction
Citation: TEMPAPO-IPD No. 6 of 2025 with OCOT No. 7 of 2025
Date: 18 September 2026

Legal Issue

Whether the Single Judge was justified in granting temporary injunction in favour of ITC in relation to its Gold Flake trade marks and trade dress against use of the mark and packaging of “IJM Gold Stag”.

The Court considered:
- Whether the Calcutta High Court had jurisdiction;
- Whether passing off relief could be granted despite the defendant’s registered mark;
- Whether the competing marks and trade dresses were deceptively similar; and
- Whether the requirements for interim injunction were satisfied.

Brief Facts

ITC instituted a commercial intellectual-property suit alleging infringement and passing off of its Gold Flake mark and trade dress by the use of “IJM Gold Stag” and associated packaging.

The Single Judge dismissed the defendant’s application to vacate the ad interim order and granted temporary injunction, principally on the finding of passing off.

The defendant appealed, contending that the Calcutta High Court lacked territorial jurisdiction, that the word “Gold” was common to trade and disclaimed by ITC, and that the trade marks and packaging were visually distinct.

The defendant further argued that registration of “IJM Gold Stag” insulated it from an infringement claim. ITC filed a cross-objection concerning the scope of protection granted by the Single Judge.

Held / Decision

The Division Bench dismissed both the appeal and the cross-objection and affirmed the Single Judge’s injunction order.

The Court held that the suit was maintainable before the Calcutta High Court. ITC’s principal office was within the Court’s jurisdiction, and a prima facie apprehension of the impugned products being marketed within West Bengal was sufficient at the interim stage.

The Court further held that registration does not bar a passing-off action. Passing off is independent of registration and is concerned with misrepresentation, goodwill and likelihood of deception.

On an overall visual comparison, the Court found sufficient similarity between the rival marks and packaging to create a likelihood of confusion in the mind of an ordinary purchaser.

The Court clarified that the findings were prima facie and confined to the interim stage. The suit remains to be decided on evidence.

Important Observations

1. Trade dress must be assessed as a whole. The inquiry is not limited to isolated words, colours or individual features. The overall get-up and market impression are relevant.

2. Ordinary consumer test applies. The comparison must be made from the viewpoint of a purchaser without a photographic memory of the exact product packaging.

3. Registration does not defeat passing off. The statutory protection available to registered marks does not bar an independent remedy for passing off.

4. Common statutory packaging elements do not end the inquiry. The mandatory statutory health warning on tobacco packages does not preclude assessment of the overall presentation of the remaining trade dress.

5. Acquired distinctiveness is relevant. The Court considered the long and extensive use of Gold Flake and the prima facie distinctiveness of its trade dress.

6. Limited appellate interference at the interim stage. An appellate court will not replace a plausible discretionary view of the Single Judge unless a material error or perversity is shown.

Full Headnote

Trade Marks Act, 1999 — Sections 28, 29, 30, 31, 124 and 134 — Trademark Infringement — Passing Off — Trade Dress — Registered Mark — Deceptive Similarity — Interim Injunction

The Calcutta High Court considered an appeal against an interim injunction restraining use of the mark and trade dress “IJM Gold Stag”, alleged to infringe and pass off the established Gold Flake mark and packaging.

Held: A passing-off action is independent of trademark registration. The statutory protection available to a registered proprietor under Sections 28(3) and 30(2)(e) of the Trade Marks Act, 1999 does not preclude relief where the claimant establishes a prima facie case of passing off.

The test is whether the overall presentation of the competing products is likely to cause deception or confusion in the mind of an ordinary purchaser. Marks and trade dress must be assessed as a whole, from the perspective of a consumer without a photographic memory.

The Court found prima facie similarity in the competing marks and packaging and held that the requirements of prima facie case, balance of convenience and irreparable injury justified continuation of the temporary injunction.

The appeal against the injunction and the cross-objection were dismissed. The observations are confined to the interim stage and do not finally determine the suit. Appeal and cross-objection dismissed. Original judgment.

Legal Significance

The judgment is significant for trade dress and passing-off disputes involving widely consumed products. It confirms that overall market impression is more important than isolated visual differences, a registered mark does not provide immunity from a passing-off claim, the ordinary consumer’s likely perception governs the interim assessment, and appellate courts exercise restraint while reviewing discretionary interim injunctions.

The ruling is confined to temporary protection and does not constitute a final decision on infringement or passing off.

View Original Judgment
Disclaimer: This case summary and headnote are provided for informational and educational purposes. Readers should refer to the original judgment for the complete text and authoritative legal position.