ITC Ltd. v. Gold Step Tobacco (P) Ltd

26th March, 2024 - 12:05 pm Categories: Legal Case Trademark 0 Comments

Introduction

With an enormous number of products available in the market, every brand has come up with their own identity to get recognised for their products. To get distinguished every brand seek to get their own trademark which can be used wholly and solely by them. The essence of trademark lies in amalgamation of such features which are capable of differentiating the goods and services from other brands. Such subject of trademark is governed by the Intellectual Property Rights and are guarded by the national and international laws. The infringements of such attracts penalization on the offender.

In this article, we will read about the recent judgement given by the Delhi High Court regarding the issue of trademark of ITC Ltd. used by the Gold Step Tobacco (P) Ltd.

Main Blog

Plaintiff is one of the largest Fast-Moving Consumer Goods (FMCG) in the country and is the possessor of trade mark “GOLD FLAKE” along with their corresponding logos, trade devices, and dresses. The Plaintiff’s predecessor-in-business adopted the trade mark “GOLD FLAKE” in the year 1905 to use it regarding the business of cigarettes, and afterwards, in 1910 it was allocated to the plaintiff.

However, in 2023 the plaintiff came across about the Defendant’s infringing activities via a twitter post, which mentioned about a raid conducted by the Central Goods and Service Tax Authority on 5th December 2023 and 6th December 2023. Goods worth 3.16 Crore were seized coming under the brand “GOLD STEP”, “PARIS”, and “GOLD VIMAL” all belonging to the defendant.

Hence, the plaintiff filed the current suit pertaining to the intellectual property rights assigned to the plaintiff in “GOLD FLAKE”, along with the ‘roundel devise’ auxiliary with “GOLD FLAKE” i.e., “  ”, “ ”, and “”.

The case on being heard, it was suggested by Justice Sanjeev Narula that the products of the defendants were deceitfully made indistinguishable in all aspects as that of the Plaintiff’s. It was opined by the court that prima facie, the case was made in the favour of the Plaintiff, and if an ex-parte ad-interim injunction is not passed, irremediable loss and damage would be suffered by the plaintiff. Moreover, the result of the test of balance of convenience also lied in the favour of the plaintiff.

Hence, the court restrained the defendant from manufacturing, selling, advertising, using, displaying, offering for sale, marketing, exporting, and printing either indirectly or directly the cigarettes under the trade mark of “GOLD STEP”. The usage of impugned roundel device and any other marks similar to the plaintiff’s marks were also restrained in order to prevent the passing off and infringement of plaintiff’s trademark and copyright, and unfair competition.

As contended by the Plaintiff that the defendants were highly intended to abolish all the physical evidences related to the infringement activities or refuse their participation in such activities, the court appointed four Local Commissioners as well as Plaintiff’s representatives and counsels, to search and seize the products (semi-finished as well as unfinished goods) available in the defendant’s premise or any other locations as may deem identifiable during commissions. Furthermore, the Local Commissioner were also allowed to open cigarettes packets to scrutinize the usage of logos and devices on the separate cigarette sticks, as the defendants were using dissimilar marks on the outer packaging of their impugned products and similar roundel devices on separate cigarette sticks.

Conclusion

Nonetheless, the court has ordered to restrain the defendant from making any further action related to the business, the case is yet to be heard, for which it is listed again on 11th July 2024.

The ITC Ltd. having the allocation of the trademark in their favour since ages, made it easier to seek the ad-interim injunction. Since the allocation of trademark provides complete ownership of such property along with the exclusive right to use, and legally protect in situation of an infringement. When the Respondent party started their business in the same field and started using the logo, it should have been scrutinized during the incorporation of the company itself. Moreover, it is also mandated under the Companies Act, 2013 that any company name should not be identical to any registered trademark.

The scenario present before us shows the laxity in compliance, diligence, and knowledge required of certain law.

Author: Suhani Gandhi, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

References

1. Simranjeet, [GOLD STEP v. GOLD FLAKE] Delhi High Court grants ad-interim injunction to ITC Ltd for its mark ‘GOLD FLAKE’ in relation to cigarettes.

[GOLD STEP v. GOLD FLAKE] Delhi High Court grants ad-interim injunction to ITC Ltd for its mark ‘GOLD FLAKE’ in relation to cigarettes