Pravin Kumar v. ITC Limited and Ors.

High Court at Calcutta, Civil Appellate Jurisdiction, Original Side, Division Bench | Date of Decision: 18th September, 2026 (Reserved on: 22.07.2026) Case Number: TEMPAPO-IPD NO. 6 OF 2025 with IA NO: GA-COM 2 OF 2026; and OCOT NO. 7 OF 2025 Bench: Hon’ble Mr. Justice Sabyasachi Bhattacharyya (author) and Hon’ble Mr. Justice Supratim Bhattacharya Citation: 2026:CHC-OS:400-DB

BACKGROUND

The respondent/plaintiff, ITC Limited, instituted a suit against the appellant, Pravin Kumar (defendant no. 1) and several other defendants (respondents herein), seeking injunction in respect of alleged infringement of ITC’s registered trade mark and trade dress in its cigarette brand “Gold Flake,” as well as passing off of that trade name and trade dress through the defendants’ use of the mark “IJM Gold Stag” and associated trade dress. By the order under appeal, the learned Single Judge dismissed the appellant’s application to vacate an earlier ad interim injunction and partially allowed ITC’s temporary injunction application, granting injunction primarily on the ground of passing off. ITC filed a cross-objection against the part of the order that had declined injunction specifically on the ground of infringement (as distinct from passing off). After the matter was assigned to the present Bench, the appellant placed before the Court an order of the Supreme Court in Writ Petition (Civil) No. 1273 of 2025 (dated 23.01.2026) requesting disposal of the appeal within six months; hearings commenced promptly thereafter but, given extensive arguments and written submissions totalling around 97 pages, concluded only on 22.07.2026, beyond the stipulated period.

The factual matrix, as it emerged from the pleadings and documents, involved multiple defendants: defendant no. 4 (IJM Cigarette Company Private Limited) held a registration for the mark “IJM Gold Stag” (Registration No. 2331406, Class 34, dated 11.05.2012, renewed and subsisting); defendant no. 2 was alleged by the appellant to be a permitted user under defendant no. 4, who in turn purportedly permitted the appellant (defendant no. 1) to use the mark; however, ITC pleaded that none of these permissions/licenses were genuine, that the registration of defendant no. 4 was itself invalid and wrongly granted, that defendant no. 2 had independently applied for registration of similar marks (“IGPL Gold Stag” and “IGPL Gold Stag Super”) asserting its own independent rights (contradicting any claim of being a mere permitted user) and that the appellant’s claimed license from defendant no. 4 was backdated, inadequately documented and contradicted by the packaging itself (which displayed the “®” symbol against the appellant’s own proprietorship name, IAKA Global, rather than against defendant no. 4). ITC’s case also rested on the alleged secondary meaning acquired by the word “Gold” in its “Gold Flake” mark through continuous use since 1905/1910, notwithstanding a disclaimer of the word “Gold” recorded (as the appellant contended) in at least six of ITC’s trade mark registrations; ITC disputed the validity and current status of these disclaimers, asserting that correction had been sought and that the disclaimer did not apply to several of its registrations in any event. ITC also relied on copyright in its artistic label (said to be an adaptation of historical artwork dating to 1905, with the author, one Meet Jain, still living) and alleged infringement/passing off given the statutory requirement under the Cigarettes and Other Tobacco Products Act, 2003 (“COTPA”) that 85% of cigarette packaging display a mandatory statutory health-warning image, leaving only 15% for the parties’ respective marks a feature the appellant argued should be excluded from any similarity comparison, but which ITC argued heightened the likelihood of confusion given the correspondingly reduced space for distinguishing marks.

ISSUES FOR DETERMINATION

Whether the learned Single Judge (and, by extension, the Calcutta High Court, Original Side) had territorial/jurisdictional competence to entertain the suit, given the appellant’s contention that the cause of action arose in Punjab, that the defendants’ business was conducted in Punjab and that no valid leave had been obtained under Clause 14 of the Letters Patent for the High Court of Judicature at Fort William in Bengal.
Whether a suit for infringement (as opposed to passing off alone) is maintainable against a party claiming to be or claiming rights derived from, a registered proprietor or registered permitted user of an allegedly infringing trade mark, having regard to Sections 28, 29, 30(2)(e), 31 and 124 of the Trade Marks Act, 1999.
Whether the appellant (defendant no. 1) was entitled to claim a valid right of user in the “IJM Gold Stag” mark on the strength of the chain of licenses/permissions traced back to the registered proprietor, defendant no. 4.
Whether ITC could assert exclusive or protectable rights in the word “Gold” as part of its “Gold Flake” trade mark, given the disclaimer of that word recorded in certain of its trade mark registrations.
Whether, on the merits, a prima facie case of passing off and/or infringement had been made out by ITC, warranting the grant of temporary injunction.
Whether the cross-objection filed by ITC (challenging the Single Judge’s refusal of injunction specifically on the ground of infringement) had merit.

KEY HOLDINGS OF THE COURT

On jurisdiction, the Court held that the suit court had and continued to have, jurisdiction. Distinguishing Clause 12 of the Letters Patent (applicable where a single cause of action arises partly outside the Court’s territorial jurisdiction, requiring “leave” to be obtained before the suit can be “received”) from Clause 14 (applicable where several distinct causes of action exist, one of which lies outside jurisdiction, requiring only a “show cause” notice followed by an order for joinder before “trial” commences, not before the suit is received), the Court held: (a) leave under Clause 12 had in fact been granted at the inception (as corrected by the Single Judge’s order dated 18.02.2025, clarifying that the earlier order of 05.02.2025 had granted Clause 12 leave, not leave under Order II Rule 2 of the CPC); (b) a show cause under Clause 14 had been issued, to which the appellant filed no response within the stipulated time, thereby waiving the right to object to joinder; (c) both Clauses 12 and 14 pertain to territorial, not subject-matter, jurisdiction and an objection to territorial jurisdiction must be raised at the earliest opportunity (per Section 21 of the CPC, which unlike Sections 16, 17 and 20, excluded by Section 120 CPC from Original Side suits remains applicable); since the appellant raised no such objection before the Single Judge, it could not be raised for the first time on appeal. The Court further held that Section 134(2) of the Trade Marks Act and Section 62(2) of the Copyright Act (couched in similar non obstante language) permitted the suit to be filed where the plaintiff’s registered office is situated (here, Kolkata) and distinguished Indian Performing Rights Society Ltd. v. Sanjay Dalia and another (where the plaintiff’s principal office lay elsewhere and only a subordinate office was within the forum) and Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey (which the Court held had misapplied that precedent) as inapposite, since here ITC’s principal office was itself within the Court’s jurisdiction and no subordinate office in Punjab was shown to exist.
On maintainability of an infringement suit against a registered proprietor/permitted user, the Court undertook a detailed textual analysis of Sections 28, 29, 30(2)(e) and 124 of the Trade Marks Act, holding: (a) Section 30(2)(e) excludes infringement only where the alleged infringer uses the mark “in exercise of the right to use… given by registration,” and does not apply to passing off, which is registration-agnostic; (b) Section 28(3) similarly bars one registered proprietor from claiming exclusivity against another registered proprietor of an identical/similar mark “merely by registration,” and protects “registered users using by way of permitted use” which the Court construed, on a conjoined reading with Section 29(4), as referring to permitted users of the infringed (plaintiff’s) mark, not permitted users of the allegedly infringing mark; (c) consequently, even a registered permitted user of an infringing mark remains exposed to an infringement claim, since only the registered proprietor (and permitted users of the senior/infringed mark) enjoy statutory protection under Section 28(3); (d) Section 124 expressly contemplates suits for infringement being maintained even against a registered proprietor of a competing mark where the plaintiff pleads invalidity of the defendant’s registration in which case the court must stay the suit (if rectification proceedings are pending) or adjourn for three months to enable rectification proceedings to be initiated, but Section 124(5) expressly preserves the court’s power to grant interlocutory relief (including injunction) during any such stay. Applying this framework to the pleadings (where ITC had specifically pleaded, in paragraphs 23, 26 and 47 of the plaint, that the appellant was not a registered user, that defendant no. 2 had no product under the mark and that defendant no. 4’s registration had been wrongly granted), the Court held the suit maintainable under Section 124(1)(b). The Court distinguished S. Syed Mohideen v. P. Sulochana Bai (which concerned a post-trial judgment on full evidence, not an interlocutory stage and which the Court read as recognising that registration is merely a recognition of a pre-existing common-law right, such that even between two registered proprietors the party with superior common-law user rights may prevail) and expressed respectful disagreement with the Delhi High Court’s reading of that precedent in M/s. Vaidya Rishi India Private Limited & Anr. v. Suresh Dutt Parashar & Ors. (which the Court held had incorrectly confined the Supreme Court’s reasoning to passing off alone and had, in the Calcutta High Court’s view, incorrectly treated Section 124 as immaterial to that analysis).
On the appellant’s claimed right of user, the Court held that a “sufficiently strong arguable case” had been made out against the validity of the appellant’s chain of title, identifying multiple specific evidentiary deficiencies: absence of any document evidencing defendant no. 4’s registration being produced in support of the Section 48 requirement; non-compliance with the written-agreement and Registrar-affidavit requirements of Section 49(1) of the Trade Marks Act; the license agreement’s execution date (29.07.2022) postdating the claimed user period (01.04.2021 onward), leaving an unexplained gap with no retrospective recognition under the Act; the “®” symbol on seized packets being displayed against the appellant’s own proprietorship name rather than defendant no. 4’s, contradicting the appellant’s own pleaded case; royalty-payment vouchers that were unsigned, unstamped, unnumbered, recorded under a “Legal Expenses” account head rather than royalty and which covered only 2022-23/2023-24 (not 2021-22, the claimed initial license period); a permission document dated 04.03.2025 (post-dating service of the suit) with no consideration or explanation recorded; defendant no. 2’s independent trade mark applications (filed in 2016, 2018 and 2019) asserting its own proprietary rights and expressly distinguishing its mark from defendant no. 4’s when the latter was cited as a registry objection directly contradicting the claim that defendant no. 2 was merely a permitted user; the appellant’s own claim of “abandonment” of the mark in a copyright application being undercut by its subsequent 2019 trade mark application for a similar mark; the absence of any document evidencing permission from defendant no. 4 to defendant no. 2 (meaning defendant no. 2, itself only a claimed licensee, could not validly have sub-licensed the appellant); and sales documentation that was undated, self-attested, directed overwhelmingly to a single distributor (Jagdambay Enterprise) linked to one Deepak Kumar (who also featured as a common director/proprietor across several defendant entities and as signatory to the license agreement), with invoices predating even the appellant’s Tobacco Board registration and appearing to reflect stock transfers rather than genuine sales.
On the “Gold” disclaimer issue, the Court held that ITC had made out a prima facie case that the word “Gold” had acquired secondary meaning distinctively associated with its products through open, continuous and extensive use since 1905, sufficient to found protectable rights notwithstanding the disclaimer. The Court reasoned: (a) the disclaimer, even if validly recorded, applied to only one (or, per the appellant’s own submission, at most a handful) of ITC’s several “Gold Flake”-family registrations and could not, per WOW MOMO Foods (P) Ltd. v. WOW Burger, affect the other registrations lacking any such disclaimer; (b) ITC had pleaded that correction of the disclaimer had been sought, that the Trade Mark Registry’s online status report bore the express caveat “not for legal use,” and that other courts (citing ITC Limited v. Golden Tobacco Limited, Madras High Court) had recognised the disclaimer recording as erroneous; (c) under Section 124 of the Trade Marks Act, even as to the admittedly disclaimed registration, the court must await the outcome of any pending rectification/correction application before conclusively resolving the issue and Section 124(5) permits interlocutory relief to continue in the interim; (d) independently of the disclaimer question, applying Pernod Ricard India (P) Ltd. v. Karanveer Singh Chhabra (recognising that even a generic/laudatory term can be monopolised if it has acquired secondary meaning as the “prominent feature” of a mark), the Court held that a substantial body of consistent judicial recognition across multiple High Courts (the Court listed ten specific prior decisions involving ITC’s “Gold Flake”/”Gold” marks against various “Gold”-prefixed competitor marks) supported the conclusion that “Gold” had acquired secondary meaning specific to ITC’s products.
On the merits of passing off/infringement, the Court held that a sufficient prima facie case had been made out, reasoning: (a) price differentials between the parties’ products were not determinative, since retailers commonly undercut pricing precisely to divert custom toward a confusingly similar product, which if anything aggravates (rather than negates) the likelihood of deception; (b) the appellant’s argument that comparison should be confined to the 15% of packaging not occupied by the COTPA-mandated statutory health warning was rejected the Court held that since a purchaser perceives the packet as an undifferentiated whole (including the statutory image) and since the shrinking of the space available for the actual brand mark to a mere 15% of the packaging heightens, rather than diminishes, the risk of confusion given the correspondingly reduced room for a purchaser to distinguish marks, the overall presentation (including the statutory image) was properly considered, consistent with ITC Limited v. Crescendo Tobacco Agency and Vikrant Chemico Industries (P) Ltd. v. Shri Gopal Engineering & Chemical Works (P) Ltd. and the line of prior “Gold Flake”-related decisions cited; (c) the test is that of an ordinary purchaser without photographic recall, not a specially discerning consumer and the “Veblen effect”/conspicuous-consumption reasoning was inapplicable to a mass-market product such as cigarettes; (d) on visual comparison, the Court found sufficient similarity to support the Single Judge’s conclusion of a real likelihood of confusion and held that this was one of the plausible views available on the record, such that the appellate Bench exercising restrained intra-court appellate review was not entitled to substitute its own equally plausible view absent an error of law or fact.
The Court accordingly affirmed the grant of temporary injunction and dismissed the appeal (TEMPAPO-IPD No. 6 of 2025) on contest and correspondingly dismissed OCOT No. 7 of 2025.
On ITC’s cross-objection, the Court held it without merit, since the impugned order had in fact granted relief under prayers (c) and (e) of the injunction application, which specifically covered infringement of ITC’s registered trade marks (in addition to passing off); the cross-objection’s premise that infringement had been denied protection was therefore factually incorrect and the cross-objection was dismissed.
Final operative order: TEMPAPO-IPD No. 6 of 2025 dismissed on contest, affirming the impugned judgment and order dated 06.02.2025 passed in IA: GA-COM 1 of 2025 with IP-COM 12 of 2025 (the primary injunction order); GA-COM 2 of 2026 disposed of consequentially; OCOT No. 7 of 2025 (the cross-objection) dismissed on contest; no order as to costs.

STATUTORY PROVISIONS INVOLVED

Clauses 12 and 14 of the Letters Patent for the High Court of Judicature at Fort William in Bengal (reproduced in the judgment), governing original civil jurisdiction where a cause of action arises partly outside or where multiple causes of action exist with one arising outside, the territorial limits of the Court’s ordinary original jurisdiction, were central to the jurisdictional analysis. The Court held Clause 12 requires “leave” before the suit is “received” (already granted here), while Clause 14 requires only a “show cause” notice followed by an order for “trial” (which the appellant failed to contest, thereby waiving objection) and that both provisions address territorial (not subject-matter) jurisdiction.

Section 134(2) of the Trade Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957 (couched in similar non obstante language), permitting suits for infringement/passing off to be instituted where the plaintiff resides or carries on business, were applied to confirm jurisdiction given ITC’s registered office in Kolkata.

Section 120 of the Code of Civil Procedure, 1908, excluding Sections 16, 17 and 20 CPC from Original Side suits, was applied to hold that the appellant’s failure to timely object to jurisdiction before the Single Judge precluded raising the objection on appeal.

Sections 28(1) and 28(3), 29(4), 30(2)(e), 31 and 124 of the Trade Marks Act, 1999 governing rights conferred by registration, infringement, the limited defence available to a registered proprietor/permitted user of a competing mark, the evidentiary weight of registration and the stay/interlocutory-relief regime applicable where validity of a competing registration is disputed, were extensively construed by the Court to hold that an infringement suit remains maintainable against a party claiming rights derived from a competing registered mark where the plaintiff disputes that registration’s validity and that interlocutory relief may be granted notwithstanding any resulting stay of the suit’s merits.

Sections 48 and 49(1) of the Trade Marks Act, 1999, governing the requirements for a valid registered user/permitted user (written agreement and Registrar affidavit), were applied to find the appellant’s claimed chain of licensing deficient.

Section 17(1) and (2) of the Trade Marks Act, 1999, providing that a mark is protected as a whole unless parts are separately registered and governing the effect of disclaimers, was referenced in connection with the “Gold” disclaimer dispute, alongside the judicially developed doctrine of “prosecution history estoppel” (as applied in PhonePe (P) Ltd. v. Resilient Innovations (P) Ltd.) though the Court ultimately found the secondary-meaning evidence and the limited scope of the disclaimer sufficient to found a prima facie case for ITC notwithstanding this doctrine.

Section 2(1)(r)(ii)(c) of the Trade Marks Act, 1999 (defining “permitted use” by written consent of the registered proprietor), was referenced in rejecting the appellant’s reliance on a consent obtained from defendant no. 4 rather than from ITC itself as a defence under Section 29(1).

Section 2(d) of the Designs Act, 2000, defining “article” as something capable of being made and sold separately, was applied to hold that cigarette packaging (sold only with the product, not independently) does not attract the Designs Act’s registration requirements or the consequent copyright-forfeiture bar under Section 15(2) of the Copyright Act, 1957.

Section 14(c)(v) of the Copyright Act, 1957, permitting adaptations of earlier artistic works and the general principle that the 60-year copyright term under Section 22 runs from the author’s death (not from first publication/use), were noted in connection with ITC’s copyright claim, though the Court declined to finally resolve this issue, holding it had not been raised before the Single Judge and could not be raised for the first time on appeal.

Section 21 of the Code of Civil Procedure, 1908, requiring objections to territorial/pecuniary jurisdiction to be raised at the earliest opportunity, was applied (as noted above) to bar the appellant’s belated jurisdictional challenge.

REASONING OF THE COURT

On jurisdiction, the Court’s reasoning was carefully textual, parsing the precise verbs used in Clauses 12 and 14 of the Letters Patent (“receive” versus “trial”) to derive a structural distinction between a precondition to the suit being entertained at all (Clause 12) and a procedural safeguard operative only up to the commencement of trial (Clause 14) a distinction the Court treated as dispositive of the appellant’s argument that no interim relief could be granted absent Clause 14 leave, since on the Court’s reading, Clause 14 compliance is required only before trial, not before interlocutory orders. The Court buttressed this textual reading by noting that the appellant had been given a specific opportunity (the show-cause notice) to contest joinder and had declined to respond, treating this as an effective waiver reinforcing the conclusion that no jurisdictional defect persisted. The Court’s extended critique of Ultra Home Construction’s application of Indian Performing Rights Society reflected a broader reasoning that precedents addressing a reverse factual scenario (plaintiff’s principal office outside, subordinate office inside, the forum) cannot be mechanically inverted and applied to the opposite scenario (principal office inside the forum) without losing their underlying rationale.

On the trade mark maintainability question, the Court’s reasoning proceeded by close parsing of the specific phrases “given by registration” (Section 30(2)(e)) and “merely by registration” (Section 28(3)), reading these as confining the statutory defence to situations where the defendant’s claim to use rests solely on its own registration vis-à-vis the plaintiff’s registration and reasoning, through a structural cross-reference between Section 28(3)’s reference to “registered users… by way of permitted use” and the materially identical phrase in Section 29(4), that this phrase must be read consistently across both provisions to refer to permitted users of the senior (infringed) mark, not the junior (infringing) mark, since reading it the other way would produce an internally inconsistent statutory scheme. This interpretive move allowed the Court to conclude that even a licensee of a competing registered mark remains exposed to suit, reinforcing this through Section 124’s express contemplation of suits against registered-mark holders where validity is disputed and Section 124(5)’s explicit preservation of interlocutory relief during any resulting stay treating this as strong textual evidence that Parliament did not intend Sections 28-30 to operate as an absolute jurisdictional bar to interlocutory relief in competing-registration disputes.

On the appellant’s chain of title, the Court’s reasoning was essentially fact-intensive and cumulative, treating no single deficiency as individually dispositive but finding that the aggregate weight of internal inconsistencies, backdating, documentary irregularities (unsigned/unstamped/unnumbered vouchers, mismatched account headings) and directly contradictory conduct (defendant no. 2’s independent registration applications asserting proprietary rights inconsistent with a claimed-licensee status) collectively supported a prima facie though not conclusive finding against the validity of the appellant’s claimed rights, consistent with the interlocutory, non-final character of the inquiry.

On the “Gold” secondary-meaning question, the Court’s reasoning combined two independent strands: first, a narrow, technical point that the disclaimer (even assuming its continuing validity, which ITC disputed) did not taint ITC’s other registrations lacking any such disclaimer, following WOW MOMO Foods; and second, a broader substantive point that regardless of disclaimer status, secondary meaning can independently support protection of an otherwise common or disclaimed term, following Pernod Ricard’s recognition that courts may identify and protect the “prominent feature” of a composite mark the Court treating the volume and consistency of prior judicial recognition of ITC’s “Gold” secondary meaning across multiple High Courts and multiple competitor marks as itself persuasive evidence supporting this conclusion at the prima facie stage.

On the merits of confusion, the Court’s reasoning engaged directly and pragmatically with the real-world mechanics of cigarette retailing and purchasing reasoning that the COTPA-mandated 85% statutory warning, far from being properly excludable from the comparison (as the appellant urged), in fact increases confusion risk by compressing the space available for distinctive branding and that an ordinary purchaser’s holistic, undifferentiated perception of the packet as a whole (rather than an analytical dissection isolating only the 15% “actual mark” portion) is the realistic frame within which deception must be assessed a reasoning approach explicitly informed by and extending, the prior line of ITC “Gold Flake” cases cited.

Throughout, the Court was explicit about the limited, interlocutory and appellately deferential posture of its review repeatedly emphasizing that it was not conducting a final trial-stage determination, that the Single Judge’s conclusions represented “one of the plausible views” on the material and that intra-court Letters Patent appellate review requires restraint, intervening only for demonstrated legal or factual error rather than mere disagreement with an equally plausible alternative view.

DOCTRINAL SIGNIFICANCE

Within the bounds of what was actually decided, this is a substantial interlocutory appellate ruling (not a final merits determination) addressing several distinct and separately significant points of trade mark and procedural law. Its most doctrinally notable contribution is the detailed construction of Clauses 12 and 14 of the Letters Patent, distinguishing the “leave before receipt” requirement of Clause 12 from the “show-cause before trial” requirement of Clause 14 and holding that non-compliance with the latter does not preclude interlocutory relief a reasoned position that, while grounded in the specific language of the Calcutta Letters Patent, adds to the sparse body of authority interpreting this century-old jurisdictional instrument in the context of modern intellectual property litigation. Equally significant is the Court’s construction of Sections 28(3), 29(4) and 124 of the Trade Marks Act, 1999 to hold that an infringement suit remains maintainable against a registered permitted user of a competing mark (as opposed to the registered proprietor itself, who alone enjoys the Section 28(3) defence) and that interlocutory relief remains available under Section 124(5) even where the suit’s substantive disposition may ultimately require a stay pending rectification a holding that engages critically and at some length with the Delhi High Court’s application of the Supreme Court’s S. Syed Mohideen precedent in M/s. Vaidya Rishi India Private Limited, expressing respectful but clear disagreement with that Court’s treatment of Section 124 as immaterial and thereby contributing to an evolving and apparently still-developing, body of case law on the interaction between competing trade mark registrations and the availability of interlocutory relief. The judgment also reinforces, in the specific context of heavily regulated product packaging (cigarettes, subject to the COTPA’s mandatory 85% health-warning requirement), a holistic rather than dissective approach to assessing likelihood of confusion treating the statutory warning as part of the overall commercial impression rather than a neutral element to be excluded from comparison, a point of practical significance for trademark litigation involving similarly regulated products. The decision does not finally resolve the underlying suit, the validity of the competing trade mark registrations, the disputed “Gold” disclaimer (which remains, per the Court’s own reasoning, subject to pending rectification/correction proceedings) or the copyright questions (which the Court declined to address, having not been raised below); its holdings are confined to the prima facie, interlocutory stage and are expressly non-conclusive on the merits, to be revisited at trial.

Pravin Kumar v. ITC Limited and Ors.

Related Posts

Leave a Comment Cancel Reply