Calcutta HC Upholds Injunction Against 'IJM Gold Stag' For Trademark Infringement, Passing Off ITC's 'Gold Flake'

The Calcutta High Court has upheld an interim injunction against the use of “IJM Gold Stag” for cigarettes, finding sufficient similarity with ITC Limited's “Gold Flake” marks and packaging to make out a prima facie case of trademark infringement and passing off.

A Division Bench of Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya delivered the judgment on September 18, 2026.

The bench also dismissed ITC's cross-objection, holding that the injunction granted by the Single Judge already covered infringement of ITC's registered trademarks and trade dress.

The dispute arose from a suit filed by ITC alleging that the use of “IJM Gold Stag” and its associated trade dress amounted to infringement of its “Gold Flake” trademarks and trade dress, besides passing off.

The operators of “IJM Gold Stag” challenged the interim injunction, arguing that the Calcutta High Court lacked territorial jurisdiction because the alleged infringement and passing off had occurred in Punjab. The bench rejected the objection, noting that leave under Clause 12 of the Letters Patent had been granted when the suit was instituted.

The bench also distinguished Clause 14 of the Letters Patent from Clause 12. It held that Clause 14 requires a show-cause process followed by an order for trial of multiple causes of action, rather than prior leave to receive the suit. In the present case, a show-cause notice had been issued, but the appellant did not respond within the stipulated time.

The appellant also argued that “IJM Gold Stag” was itself a registered trademark and therefore could not be the subject of an infringement action. The bench held that Sections 28 to 30 of the Trade Marks Act did not, by themselves, bar the suit or an interlocutory order. It noted that Section 124 permits such a dispute to be raised where the validity of the competing registration is questioned.

The appellant further argued that “Gold” was a common and laudatory word and that ITC had disclaimed it in some registrations. The bench held that ITC had made out a prima facie case that “Gold” had acquired secondary meaning through its long and extensive use.

On the similarity between the products, the court rejected the argument that the statutory health warning, which covers 85% of a cigarette packet, should be excluded from the comparison. It held that the packet had to be assessed as a whole and observed that the limited space available for branding could increase the possibility of confusion.

The court also rejected the argument based on price differences, observing that the products could be sold through the same outlets and trading channels.

“On a visual comparison of the trade marks as well, we find sufficient similarity between them,” the bench held.

The court stressed that it was deciding the matter only at the interim stage and not finally after a trial. It found that the Single Judge had taken “one of the plausible conclusions” and that there was no perversity or gross error warranting appellate interference.

The appeal was dismissed. ITC's cross-objection was also dismissed, with the bench holding that the existing injunction already protected ITC against passing off as well as infringement of its trademarks and trade dress.