Can a defendant hide behind its own trademark registration when sued for imitating an established brand? The Calcutta High Court's judgment of 18 September 2026 in the Gold Flake litigation answers with a firm no. ITC sued over the mark and get-up of "Gold Stag" cigarettes, alleging infringement of and passing off against its "Gold Flake" marks; the single judge granted an interim injunction on the passing-off case, and the Division Bench has now dismissed the defendants' appeal — holding that registration is merely prima facie evidence of validity, and that even an infringement action can be maintained against the holder of a registered mark whose validity is credibly disputed.
The suit and the appeal
ITC Limited sued the defendants over the cigarette brand "Gold Stag", asserting its registrations and long use of "Gold Flake" and alleging both infringement and passing off. The single judge granted an interim injunction, resting the order on passing off. The defendants appealed to the Division Bench, attacking the order on three main fronts: the Calcutta court's territorial jurisdiction, the protective effect of their own registration and claimed licensed-user status, and the merits of the deceptive-similarity finding.
The jurisdictional challenge fails
The defendants argued that the cause of action arose in Punjab, beyond the court's territory. The Bench held jurisdiction well founded: leave under Clause 12 of the Letters Patent had been granted when the suit was instituted, Clause 14 required no such leave but merely a show-cause mechanism, and Section 134(2) of the Trade Marks Act independently permitted ITC to sue where its principal office in Kolkata is located. For brand owners, the point is practical — the special jurisdiction under Section 134(2) remains a powerful forum anchor in infringement actions.
Registration as a defence: the limits
Prima facie, not conclusive
Registration under Section 31 is prima facie evidence of validity. Where the plaintiff disputes the validity of the defendant's mark, the suit proceeds, with Section 124 channelling the validity challenge; the certificate is a starting point, not an immunity.
Licence claims need proof
The defendants' asserted rights as licensed users collapsed on inspection: licence agreements bearing dates earlier than their execution, royalty vouchers unsigned and unstamped, and trademark applications in which the defendants claimed independent proprietorship — contradicting their own licence theory.
Disclaimers read in context
The argument that ITC had disclaimed exclusivity over the word "Gold" in one registration failed because multiple other Gold Flake registrations carried no disclaimer, and courts have recognised the secondary meaning acquired by ITC's use of the brand since the early 1900s.
Passing off in a regulated market
Cigarette packaging is dominated by the mandatory 85% pictorial health warning, leaving traders a narrow band in which to present their marks. The Bench treated that reality as sharpening, not diluting, the passing-off analysis: within the 15% where brands actually compete for the consumer's eye, the overall presentation of "Gold Stag" raised a sufficiently strong arguable case of confusion with "Gold Flake". The interim injunction therefore stood, on both the passing-off and, prima facie, the infringement footing.
Practical notes for brand disputes
Plead and prove the forum foundation early — Section 134(2) (and Section 62 of the Copyright Act where it applies) can keep the litigation at the proprietor's home forum.
Attack the paperwork behind a claimed registration or licence: execution dates, stamping, authentication and contradictory filings before the Registry are fertile cross-examination material even at the interlocutory stage.
For regulated products, frame deceptive similarity within the space consumers actually see; side-by-side exhibits of the distinctive zones are more persuasive than whole-pack comparisons.
Defendants relying on registration should remember Section 124's machinery — a rectification challenge has to be confronted, not assumed away.
The Delhi angle
Delhi remains the country's busiest trademark forum, and its commercial courts apply the same propositions daily: registration is prima facie evidence only, licence claims are tested on their documents, and passing off protects trade dress beyond the registered word marks. This Division Bench judgment adds a current, carefully reasoned authority — from a coordinate High Court — on all three fronts.
This article is for general information only and is not legal advice or a solicitation.
Frequently Asked Questions
What was the dispute about?
ITC, proprietor of the Gold Flake cigarette marks used since the early twentieth century, sued the defendants over their mark "Gold Stag", alleging trademark infringement and passing off through a deceptively similar name and trade dress. The single judge granted an interim injunction founded on passing off, and the defendants appealed.
The defendants held a registration — why did it not protect them?
Because under the Trade Marks Act registration is prima facie evidence of validity, not conclusive proof. Where the plaintiff credibly disputes the validity of the defendant's mark, the action — including an infringement action — remains maintainable, with Section 124 governing the interplay with rectification proceedings. The defendants' claimed licence arrangements also failed scrutiny: agreements predating their execution dates and unauthenticated royalty vouchers.
How was jurisdiction in Calcutta sustained?
On two independent footings: leave under Clause 12 of the Letters Patent had been properly granted at the suit's inception, and ITC's principal office in Kolkata satisfied Section 134(2) of the Trade Marks Act, which lets a registered proprietor sue where it carries on business.
What about the statutory health warning covering most of the pack?
The Court assessed deceptive similarity on the portion of the packaging in which traders can actually distinguish themselves — the distinctive area remaining after the mandatory 85% graphic health warning — and found a sufficiently strong arguable case of passing off on the overall presentation.