The Calcutta High Court has upheld a temporary injunction (stay) on the cigarette brand found to be “deceptively similar” to ITC’s “Gold Flake” cigarettes in a trademark infringement case. The court noted that the common man “goes to the market without having a photographic memory of the exact mark of the product intended to be purchased”.Justices Sabyasachi Bhattacharyya and Supratim Bhattacharya were listening to an appeal filed by the manufacturer of “IJM Gold Stag” cigarettes against a temporary injunction granted by a High Court single judge against him to ITC. “When a purchaser buys a cigarette packet,” the court said, “It is the total picture (including the statutory image) which he sees in its entirety, and no normal person would separately scrutinise the actual mark”.The September 18 ruling went on, “The test in a passing off or infringement action is that of a ‘common man’, who goes to the market without having a photographic memory of the exact mark of the product intended to be purchased. Apart from the fact that much of the population is colour-blind to different degrees, there may be sufficient confusion, even for a person capable of distinguishing colours, between the yellow and gold marks, respectively, of the products of the man and ITC.”Also read | Train ‘delayed’ by nearly 9 hours, Jharkhand man wins Rs 35,000 payout from railwaysITC had filed a case against the man alleging that he had copied the trademark and trade dress of its cigarette brand “Gold Flake” and tried to make his “IJM Gold Stag” cigarette look like ITC’s product by using a similar name. Subsequently, the single judge of the Calcutta High Court granted ITC a temporary stay. The man then filed a case against the order of the single judge.‘Striking resemblance’Senior advocate Tilak Kumar Bose and advocate Soumya Ray Choudhury, appearing for the man, argued that since the man carries on his business only in Punjab, the Calcutta High Court has no say in this matter. The counsel contended that although the two products were being called similar because of the word “gold,” ITC did not have a separate registration for the word ‘gold’, which was otherwise a generic word.The counsel submitted that the colour combination of the ITC product was gold-brown and that of the man was yellow-gold, with a vertical red ribbon. The counsel also urged that ITC did not have any registration of the colour combination red and gold and therefore, could not claim monopoly over using the same.Senior advocate SN Mukherjee and advocate Paritosh Sinha, appearing for ITC, argued that the word “gold” was a “pragmatic feature” of ITC’s trademark and had gained a secondary meaning in relation to the company. The counsel further contended that ITC had been continuously and extensively using the word ‘gold’ with its products since the year 1905.Story continues below this adAlso read | ‘No adulteration’: Delhi High Court quashes 1995 case over misbranding of marinadeThe counsel further urged that the “striking resemblance” in get-up, layout, colour combination, and placement of features between both of the products was “palpable”. The counsel also stated that since 85 per cent of the packaging was covered by the statutory health warning, only 15 per cent was reserved for the unique mark of a seller, and with such limited space for actual marks, confusion was “imminent” when the marks were identical.‘Deceptively similar mark’The High Court noted that ITC’s principal office was situated in its territory and nothing had been shown to prove that ITC had any subordinate office in Punjab and therefore, it could indeed deal with the case. After evaluating the arguments, the bench further held that the word “gold” had gained a secondary meaning in relation to ITC’s products and therefore was an “integral component” of its trademark.The High Court observed that if “the trademark itself comprised the entirety of the packet, it would be far easier for the customer to distinguish between it and a different mark. However, by limiting the mark to a minuscule portion of the image, the chance of distinguishing it from a deceptively similar mark is considerably reduced.”The bench referred to the very nature of the product sold under the trademarks-in-question, which was widely consumed in India, defined the section of the populace which buys the same, which is quite universal, cutting across all strata of society. “On a visual comparison of the trademarks as well, we find sufficient similarity between them”.