The Delhi High Court has delivered a significant verdict, reinforcing the legal protection for ITC Limited's iconic Gold Flake cigarette brand, a trademark held for over a century. The court ruled against local tobacco companies, including Pelican Tobacco Co Ltd, for selling products with deceptively similar branding, thereby passing off their goods as ITC's.
A Century of Brand Legacy Upheld
In a decisive order, Justice Tejas Karia affirmed that the use of the word 'GOLD' has become indelibly associated with ITC's products, acquiring a secondary meaning within the cigarette industry. ITC has held the trademark for 'Gold Flake' since 1910, building immense brand equity over 114 years. The court found that the defendants' products, 'Gold Fighter' and 'Gold Flame', used a font, colour scheme, logo, and packaging strikingly similar to Gold Flake.
The court stated that the trademarks are deceptively similar with the clear purpose of causing confusion among customers to generate sales by riding on ITC's established goodwill. This final judgment comes after the court first granted an interim injunction in ITC's favor in March 2024.
Arguments Presented in the Landmark Case
ITC's legal team presented a compelling case, arguing that the defendants had replicated all essential features of the Gold Flake mark. They emphasized that minor variations, such as substituting a 'K' with an 'M' to form 'GOLD FLAME' from 'GOLD FLAKE', were merely superficial changes that did nothing to prevent consumer confusion.
A critical point raised by ITC pertained to the sale of loose cigarettes. The company argued that since cigarettes are often sold as loose sticks with minimal branding, the nearly identical markings could easily mislead consumers. This, they contended, could allow unscrupulous retailers to sell the infringing products as genuine ITC cigarettes to reap higher profits, leading to 'initial interest confusion'.
The defendants, Pelican Tobacco Co Ltd, countered by accusing ITC of filing the infringement suit more than seven years late, as ITC had been aware of Pelican's 'Gold Flame' product since 2017. They also argued that ITC was attempting to claim a monopoly over common descriptive marks and that buyers in the tobacco market are reasonably well-informed and purchase cigarettes by name, minimizing the possibility of confusion.
Broader Implications for Brand Protection
The Delhi High Court's ruling is a landmark decision for trademark law in India, particularly for legacy brands. It sends a strong message against attempts to free-ride on the reputation and goodwill of established products. By protecting the secondary meaning acquired by the 'Gold' moniker in the context of ITC's cigarettes, the judgment sets a significant precedent for other companies fighting similar battles against look-alike products.
The court's rejection of the defendants' arguments solidifies the principle that even common words can be protected as trademarks if they have gained a distinct identity through long and extensive use. This victory for ITC safeguards a brand that has been a part of the Indian commercial landscape for over a hundred years.
