The Spark of Deception: When a Single Letter Threatens a Century of Goodwill

In a resounding affirmation of trademark integrity and the sanctity of established brand reputation, the Delhi High Court has delivered a decisive blow against opportunistic imitation, granting an absolute interim injunction in favor of ITC Limited. This vital ruling shields ITC’s century-old, well-known trademark ‘GOLD FLAKE‘ from imminent dilution, immediately restraining the defendants, Pelican Tobacco Co. Ltd. & Ors¹., from exploiting the deceptively similar mark ‘GOLD FLAME‘ in the sale of cigarettes. The judgment stands as a powerful testament to the judiciary’s firm stance against commercial sharp practice, reinforcing the principle that years of market investment and hard-earned consumer goodwill are inviolable under Indian law.

The Anatomy of a Brand and the Matrix of the Conflict

The narrative begins with ITC Limited, a formidable market leader whose ‘GOLD FLAKE’ mark has been a ubiquitous presence in India for over a hundred years, with the earliest registration dating back to 1942. This continuous and extensive usage has cemented ‘GOLD FLAKE’ as a mark of immense goodwill, recognised as a well-known Trade Mark by judicial declaration. To put its commercial strength into perspective, the brand’s cumulative sales turnover between 1996 and 2024 stands at a staggering ₹3,74,288 Crores. In the context of cigarettes, the word ‘GOLD’ itself has transcended its generic meaning and acquired a powerful secondary meaning, synonymous with the plaintiff. The conflict arose when the plaintiff discovered the defendants manufacturing and selling cigarettes under the marks ‘GOLD FLAME’ and ‘GOLD FIGHTER’, coupled with an almost identical trade dress. This adoption was swiftly challenged, leading to the High Court’s initial ex-parte ad-interim injunction on March 13, 2024, which the defendants then sought to vacate. The ensuing legal battle required the Court to scrutinise the degree of similarity between the competing marks and the intent behind the defendants’ adoption.

Deceptive Similarity and Triple Identity

The Court’s rationale for confirming the injunction rested firmly on the principles of trademark infringement and passing off. The core legal finding was that the defendants’ adoption of ‘GOLD FLAME’ constituted a clear case of deceptive similarity. Critically, the Court observed that the substitution of a single letter, changing the plaintiff’s ‘K’ to the defendant’s ‘M’—forming ‘GOLD FLAME’ from ‘GOLD FLAKE’—was a minor, superficial variation. It was deemed wholly insufficient to distinguish the two marks in the eyes of an average consumer. This case presented a classic instance of “triple identity”, a decisive factor in infringement cases: the marks were found to be nearly identical phonetically and visually; the product category (cigarettes) was identical; and the trade channels and consumer base were the same. The judgment deeply probed the commercial environment of the product. Due to the statutory mandate requiring 85% of cigarette packaging space for health warnings under The Cigarettes and Other Tobacco Products Act, 2003 or COTPA, 2003, the limited area available for branding increases the likelihood of confusion. This led the Court to apply the robust doctrine of Initial Interest Confusion. 

Referencing the ratio of cases like Parle Products Pvt. Ltd. v. J.P. & Co. Mysore², the Court reasoned that the defendants’ use would cause confusion even at the preliminary stage when a consumer, typically buying loose cigarettes, might be momentarily misled by the similar name and design. The very act of diverting a consumer’s attention, even if transiently, by riding on the plaintiff’s reputation is sufficient to establish infringement.

The Court’s decision was buttressed by a wealth of precedent, solidifying the legal position against the defendants. It relied on the test laid down in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Laboratories³, holding that infringement is established when the broad essential features of the registered mark have been copied. Furthermore, in rejecting the defendants’ plea that ‘GOLD’ was generic, the Court took cue from cases like Pernod Ricard India v. Karanveer Singh Chhabra, affirming that once a descriptive mark like ‘GOLD’ has acquired a secondary meaning through extensive use, it is entitled to robust protection.

Most importantly, the Court addressed the element of intent. The defendants failed to provide any credible, honest justification for choosing a mark so closely aligned with a market leader. This dishonest adoption was deemed prima facie evident. Recalling the principle from Midas Hygiene (P) Ltd. v. Sudhir Bhatia, the Court reaffirmed that where adoption is dishonest, the defence of delay or laches on the part of the plaintiff is rendered inconsequential. The very object of the defendants appeared to be to benefit from the reputation of the ‘GOLD FLAKE’ mark.

Conclusion

The Delhi High Court’s judgment is not just a commercial victory for ITC Limited; it is a vital affirmation of trademark law in India. By confirming the interim injunction, the Court has sent an unequivocal message: minor variations like changing a single letter will not save an infringer when the intent is clearly to trade upon the hard-earned goodwill of a well-known brand. This ruling upholds the sanctity of intellectual property, ensuring that the legacy built by a century of commerce, represented by the ‘GOLD FLAKE’ mark, remains protected from the encroaching flame of deception.

Citations

1. Pelican Tobacco Co. Ltd. & Ors CS(COMM) 221/2024
2. Parle Products Pvt. Ltd. v. J.P. & Co. Mysore AIR 1972 SC 1359
3. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Laboratories 1965 SCR (1) 737

Expositor(s):  Adv. Archana Shukla