ITC Limited v. Ravi Kishor & Anr.

What happened

ITC Limited, a diversified Indian company whose cigarette business dates from 1910, markets cigarettes under marks including GOLD FLAKE, WILLS, FLAKE and CLASSIC. It said that GOLD FLAKE was adopted in 1905 by its predecessor and used since 1910 with a red-and-gold colour scheme, that it holds registrations in Class 34 for GOLD FLAKE formative marks and roundel devices, the earliest being Registration No. 7678 dated 11 November 1942, and for the GOLD FLAKE PREMIUM trade dress (Registration No. 3587126 dated 7 July 2017), WILLS, HONEYDEW, HONEYDEW BLEND, HONEYDEW SMOOTH and the STAR device, that it owns copyright in the artistic works in its packaging and the ITC device, and that its sales were ₹51,292 crores in the financial year 2025-2026 and ₹4,71,350 crores cumulatively over three decades.

It said that on 3 September 2026 it received information that counterfeiting was being carried on at premises in Village Dudhli Khadar and complained to the police the same day, and that on the night of 3 and 4 September 2026 the police searched the premises, an old school building camouflaged behind a board showing a cattle shed, and found about twenty workmen making counterfeit GOLD FLAKE PREMIUM cigarettes. The first defendant, present at the premises and holding himself out as the owner, produced no registration, licence or authorisation and said that the raw material, packaging and machinery came from Cambodia, and FIR No. 0203/2026 of 4 September 2026 was registered at Police Station Hastinapur under sections 318(4), 338, 340(2) and 342 of the Bharatiya Nyaya Sanhita, 2023 and sections 63 and 65 of the Copyright Act, 1957. The seized goods, estimated at about ₹1,44,67,000, include 94 cartons of ready cigarettes (1,128,000 sticks) worth ₹1,29,72,000, 13 cartons of loose GOLD FLAKE PREMIUM cigarettes (about 130,000 sticks) worth ₹14,95,000, filter paper, empty packets, wholesale packaging bearing the GOLD FLAKE PREMIUM logo and automatic cigarette-making machines, and the premises remain sealed. ITC said that the printed packs reproduce its marks, trade dress and house mark in the same positions as on genuine packs, and even its corporate name, manufacturing address and customer-care details, that the activity evades the industrial licensing under the Industries (Development and Regulation) Act, 1951 and the registration of the Tobacco Board, and that unrecorded cash sales evade the indirect tax that makes up about 60-65% of the retail price of a lawful cigarette, as it told the Directorate General of GST Intelligence in a representation of 7 September 2026.

Questions before the court

• Has ITC made out a prima facie case for an ex parte ad-interim injunction against the manufacture and sale of counterfeit GOLD FLAKE cigarettes and the use of its marks, trade dress and packaging?

Why the court ruled this way

Having heard the plaintiff's senior counsel, the Court was of the view that a prima facie case was made out for an ex parte ad-interim injunction, that the balance of convenience lay in the plaintiff's favour and that it was likely to suffer irreparable harm if the injunction was refused (paragraph 36). The plaintiff is the registered proprietor of GOLD FLAKE and the roundel devices, with the earliest registration of 1942 and use for over a century, and has copyright in the GOLD FLAKE PREMIUM trade dress and the other elements of its packaging, its turnover of ₹51,292 crores in 2025-2026 and cumulative sales of ₹4,71,350 crores show the goodwill, registration confers the statutory right under section 28 of the Trade Marks Act, 1999 to exclusive use, any violation is infringement under section 29, and long use gives common law rights (paragraph 37). A comparison of the impugned goods with the originals prima facie shows that they are counterfeits copying the trade marks and the trade dress in every element, including the red-and-gold scheme, the roundel device, the STAR device with the word Premium, HONEYDEW BLEND, the W.D. & H.O. Wills signature on the tipping paper and even the manufacturing panel bearing the plaintiff's name and address, the goods and trade channels being identical so that confusion is inevitable, and the defendants are prima facie infringing the trade marks and copyright and passing off, while the illegal activity is a potential threat to public health if the cigarettes are of inferior quality and leads to loss to the public exchequer (paragraph 38).

Controlling point

Counterfeit cigarettes that reproduce in every element a proprietor's registered marks, roundel devices, trade dress, house mark and manufacturing panel are prima facie an infringement of its trade marks and copyright and passing off, warranting an ex parte ad-interim injunction against their manufacture and sale.

Order and next steps

The Court exempted the plaintiff from pre-institution mediation because urgent relief was prayed for, having regard to Yamini Manohar v. T.K.D. Keerthi and Chandra Kishore Chaurasia v. RA Perfumery Works, exempted it from advance service on the defendants, allowed it to place additional documents on record within 30 days, registered the plaint as a suit and issued summons returnable before the Joint Registrar on 12 October 2026, with written statements due within 30 days. Until the next date of hearing it restrained the defendants and all others acting on their behalf from manufacturing, selling, offering for sale, marketing or distributing the impugned product, directly or indirectly, and from using packaging, wrappers, pamphlets, printed sheets or other material bearing the registered marks GOLD FLAKE and the roundel devices, the GOLD FLAKE PREMIUM trade dress, W.D. & H.O. WILLS, HONEYDEW, HONEYDEW BLEND, HONEYDEW SMOOTH, the STAR device, WILLS and the ITC device, or any other mark, device, label, get-up, trade dress or packaging identical or deceptively similar, amounting to infringement of trade marks and copyright or passing off. It directed the plaintiff to comply with Order XXXIX Rule 3 within two weeks and issued notice on the injunction application returnable before the Court on 22 January 2027.

Practical implications

A brand owner that learns of a counterfeiting operation can combine a police complaint and seizure with a civil suit and an ex parte ad-interim injunction, supported by the seized goods, a comparison with genuine products and evidence of registrations, and persons dealing in such goods should expect the injunction to reach manufacture, sale, packaging and printed material.

Limits of this ruling

• The order is an ex parte ad-interim order passed on the plaintiff's case as set out in the plaint, and it continues only until the next date of hearing. The defendants were not heard, the Court did not finally decide infringement, passing off or copyright infringement, and the regulatory allegations about industrial licensing, Tobacco Board registration and tax evasion are recorded as the plaintiff's case and not decided.