A health warning covers 85% of the pack, which makes confusion more likely, not less: Calcutta HC
Squeezing a cigarette brand into the 15% a statutory warning leaves it sharpens the risk of deception, a Calcutta Division Bench holds, upholding an injunction protecting Gold Flake.
A statutory health warning occupies 85 per cent of a cigarette packet. The Calcutta High Court has now held that this does not make two brands easier to tell apart — it makes them harder, because everything that distinguishes one from the other has to fit in the 15 per cent that is left. On 18 September 2026, in Pravin Kumar v. ITC Limited and Ors., a Division Bench of the Calcutta High Court — Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya — dismissed an appeal against a temporary injunction restraining the use of the mark and trade dress “IJM Gold Stag”, holding that the buyer of a product consumed this widely cannot be expected to scrutinise and subtly distinguish the shapes of devices or the background of a mark.
The suit had been filed by ITC Limited seeking an injunction in respect of alleged infringement of the trade mark and trade dress of its cigarette brand “Gold Flake”, and of passing off of that trade name and dress through the defendants’ use of “IJM Gold Stag” and its associated get-up. A learned Single Judge had dismissed the first defendant’s vacating application and partly allowed the injunction application, granting relief primarily on passing off. Both sides came up: the defendant by appeal, the plaintiff by cross-objection against the refusal of injunction on infringement.
The judgment records an unusual procedural note. After the matter was assigned to this Bench, the appellant placed before the Court an order of the Supreme Court dated 23 January 2026 in Writ Petition (Civil) No. 1273 of 2025 recording a request that the appeal be disposed of within six months. The hearing began on the next available date; extensive arguments followed, with numerous authorities cited and elaborate written notes filed on both sides.
The jurisdictional attack
The appellant’s first line was that the Calcutta High Court had no business hearing the suit at all. The alleged infringement and passing off occurred in the State of Punjab; the defendants’ addresses are in Punjab and their business is conducted there, not in Kolkata. Without leave under Clause 14 of the Letters Patent, it was argued, no injunction could be granted in a composite action of passing off combined with infringement — a proposition said to be supported by Hindustan Unilever Limited v. Three Leaves India Pvt. Ltd. and its affirmation on appeal.
The objection was pressed as going beyond territoriality into inherent jurisdiction, so that no specific plea was required at the inception before the trial judge. Reliance was placed on Asma Lateef v. Shabbir Ahmad, where the Supreme Court held that an objection to maintainability or jurisdiction must be determined at least prima facie before interlocutory relief is granted. Section 134(2) of the Trade Marks Act, 1999, it was said, does not apply to passing off and in any event only creates an additional forum for the proprietor.
The Bench worked through the authorities and found the key one pointing the other way on these facts. Indian Performing Rights Society Ltd. v. Sanjay Dalia holds that a plaintiff who carries on business at the place where the cause of action arose must sue there, and cannot pick another place merely because it maintains an office there. Here the argument was the exact reverse: the defendant contended the suit should have been filed in Punjab, where part of the cause of action arose, while it was undisputed that ITC’s principal office is in Kolkata. With the principal office within the Court’s jurisdiction, the case falls squarely within Section 134(2) of the Trade Marks Act and the corresponding provision of the Copyright Act, and Sanjay Dalia is not applicable.
Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey was distinguished in stronger terms. That decision rested on Sanjay Dalia and Section 20 of the Code of Civil Procedure, and, the Bench observed with respect, somewhat misinterpreted what Sanjay Dalia had laid down, applying its ratio in a reverse factual matrix despite the plaintiff’s principal office being situated elsewhere. In the present case the plaintiff’s principal office is within the jurisdiction, part of the cause of action is pleaded to arise here, and nothing was produced to show that the plaintiff has any subordinate office in Punjab. The suit court had, and has, jurisdiction to entertain and decide the suit on merits.
Who is the buyer the law protects
On similarity, the appellant’s case depended on the differences a careful eye can find: the shape of the device, the background of the mark, the detail that separates one gold-liveried packet from another.
The Bench answered by asking who actually buys the product. The nature of the goods sold under the marks in question — widely consumed across India — defines the relevant section of the public, and that section is quite universal, cutting across all strata of society. The economic theory of the Veblen effect, or conspicuous consumption, has no application to a common product of this kind. The purchaser is not expected to be so discerning as to scrutinise and subtly distinguish between the shapes of devices or the background of a mark. The distinction the appellant drew between an oval shape and the rest of the get-up therefore could not bear the weight placed on it.
On a visual comparison of the marks the Bench found sufficient similarity. It saw no illegality amounting to perversity or gross error in the Single Judge’s conclusion that there is every chance of deception and confusion in the mind of the purchaser. The trial judge had arrived at one of the plausible conclusions available on the material, and an appellate court does not substitute its own view for a plausible one. Sufficient triable issues had been raised to justify the temporary injunction.
Fifteen per cent to work with
The appellant’s most developed argument turned the statutory warning to its own advantage. Under the Cigarettes and Other Tobacco Products Act, 2003, it said, 85 per cent of the allegedly infringing mark consists of a statutory image common to every product including the plaintiff’s — so the comparison should be confined to the remaining 15 per cent, where the differences are easier to see.
The Bench accepted the arithmetic and reversed the conclusion. Applying the approach in ITC Limited v. Crescendo Tobacco Agency and Vikrant Chemico Industries (P) Ltd., what matters is the overall presentation and the likelihood of misrepresentation. With only 15 per cent of the pictorial left for the actual mark after the statutory image has taken the rest, the possibility of confusion and deception is all the more accentuated, and confusion may arise in the mind of the common buyer on the slightest similarity between the marks.
The judgment puts the point in terms of what a shopper is given to work with. Where a trade mark comprises the entirety of the packet, a customer finds it far easier to distinguish it from a different mark. By confining the mark to a minuscule portion of the image, the chance of distinguishing it from a deceptively similar one is considerably reduced. Taking a pragmatic view, the overall impression a customer receives has to include the 85 per cent statutory image as well, because what the purchaser buys is the whole packet.
The test the Bench applied is that of a common man who goes to the market without carrying a photographic memory of the exact mark he intends to buy. Much of the population is colour-blind to some degree; and even a purchaser who distinguishes colours well may be confused between the yellow of one packet and the gold of the other, particularly in combination with the rest of the get-up.
The appellant’s argument from price fared no better. A difference in price loses its relevance in the reality of the marketplace, where retailers often give up part of their margin to sell cigarettes below the going rate, and where a common purchaser is unlikely to treat the price asked as a guarantee of which brand is in his hand. The Bench also found a prima facie case that the word “Gold” has acquired a secondary meaning for the plaintiff’s products and is an integral component of its mark. An argument that the artistic design attracted the Designs Act, 2000 was held unnecessary to decide, and in any event doubtful: Section 2(d) of that Act speaks of articles capable of being made and sold separately, and cigarette packaging is part of the product rather than something sold independently.
Can a registered proprietor be sued at all
A second strand of the defence rested on the appellant’s own registration. The Bench worked through Sections 28 to 30 and Section 124 of the Trade Marks Act and set out four propositions.
Section 30(2)(e) protects the use of a registered mark which is one of two or more similar registered marks, but only where the use is “in exercise of the right to the use of that trade mark given by registration”. Section 28(3) says that as between two registered proprietors of similar marks, exclusive rights are not acquired “merely by registration” as against each other. Read together, both provisions tie the exception to infringement claimed on the strength of registration alone — and neither touches passing off, which is registration-agnostic.
The Bench then distinguished proprietors from permitted users, and on a close reading held that the registered permitted users referred to in these provisions are users of the mark alleged to have been infringed, not of the infringing mark. The consequence is that an infringement action is maintainable against a registered permitted user of an infringing mark, even though the proprietor of that mark is protected under Section 28(3).
Section 124 was held to circumscribe the scheme. It implicitly recognises the maintainability of an infringement suit universally: where the defendant pleads invalidity of the plaintiff’s registration, or raises the Section 30(2)(e) defence and the plaintiff pleads the invalidity of the defendant’s registration, the suit stands, with the court either staying it pending rectification or adjourning for three months to enable an application. Crucially, sub-section (5) provides that a stay does not preclude the court from making interlocutory orders, including an injunction, during the stay. Read together, the provisions bar a claim of infringement against a registered proprietor of a similar mark but permit the claim to be made the subject matter of a suit and, on a prima facie case, to attract interim protection. A further objection raised for the first time on appeal was shut out, the Bench holding that an issue never put to the suit court — where the plaintiff could have answered it on facts — cannot be opened in appeal by a party that had contested the injunction application tooth and nail.
Two thresholds the appellant could not cross
Having upheld maintainability, the Bench identified two further hurdles, and the second is the more instructive.
The first is the stage of the proceeding. What was before the Court was the preliminary question of injunction, where a prima facie case on the strength of triable issues is what must be shown. Unlike most of the decisions the appellant cited, neither the Single Judge nor the Division Bench was deciding the suit finally upon trial on evidence, where findings would have a conclusive texture. For a prima facie case, sufficiently arguable issues had been raised.
The second is the nature of an intra-court appeal. Between two Benches of different strengths within the same High Court, the appellate Bench has to be doubly cautious. Where the Single Judge has taken one of the plausible views on the material before him, the high tests governing interference in a Letters Patent appeal are not met simply because another view was available. Those tests, the Bench held, had not been satisfied.
The cross-objection
ITC’s cross-objection was that the Single Judge should have granted the same protection on infringement as on passing off. The Bench found no merit in it, and for a reason that goes to what the order below actually did. The impugned order granted relief in terms of prayers (b), (c), (d), (e), (f), (g) and (h) of the notice of motion, and prayers (c) and (e) categorically cover infringement of the plaintiff’s rights in its registered trade marks. The premise of the cross-objection was therefore misplaced: the protection said to have been withheld had in substance been given.
The Bench also recorded its conclusion that a sufficient prima facie case of both infringement and passing off had been made out, and that the other tests for a temporary injunction were satisfied on the materials and pleadings before the Single Judge.
Order
TEMPAPO-IPD No. 6 of 2025 was dismissed on contest, affirming the impugned judgment and order dated 6 February 2025 passed in IA: GA-COM 1 of 2025 with IP-COM 12 of 2025. GA-COM 2 of 2026 was consequentially disposed of, and OCOT No. 7 of 2025 — the cross-objection — was also dismissed on contest. There was no order as to costs, with urgent certified copies to be supplied on compliance with formalities.