HC bars Pelican from using trademark of ITC's Gold Flake

New Delhi: The Delhi High Court has restrained Delhi-based Pelican Tobacco Co from using the name, trade dress and labels similar to ITC's Gold Flake trademark until the latter's infringement suit is decided.

ITC had accused Pelican Tobacco of passing off cigarettes labelled 'Gold Fighter' and 'Gold Flame' in a font, colour scheme, logo and packaging closely resembling its flagship Gold Flake product.

Justice Tejas Karia held that the "use of the word 'GOLD' has become indelibly associated" with ITC's product, giving it a "secondary meaning within the cigarette industry".


ITC has held the Gold Flake trademark since 1910 and the court said Pelican had replicated all essential features of ITC's marks and labels, noting that Pelican had provided no credible explanation for adopting the disputed marks and describing the adoption as "prima facie dishonest".

"The defendants' minor variation, substituting 'K' with 'M' to form 'Gold Flame' from 'Gold Flake', does not make the competing marks dissimilar. Cigarettes are purchased by all classes of consumers and when sold loose, buyers may not check exact spellings before purchasing the infringing product," the order stated, adding that ITC had established its prior use, goodwill and reputation.

The judge said the word 'gold' has no natural connection with cigarettes and that it was ITC that first used it in relation to the product. Pelican's use of the 'Gold Flame' mark was dishonest and aimed at exploiting the goodwill and reputation of ITC's marks to cause market confusion, the court added.