Bombay High Court Steps In To Curb Counterfeit ‘Gold Flake’ Cigarettes, Citing Trademark Infringement And Public Health Risks
Bombay High Court Steps In To Curb Counterfeit ‘Gold Flake’ Cigarettes, Citing Trademark Infringement And Public Health Risks
Introduction
The Bombay High Court has granted interim protection to ITC Limited by restraining the manufacture and sale of counterfeit “Gold Flake” cigarettes, holding that denial of immediate relief would not only undermine trademark and copyright protection but also expose consumers to serious public health risks.
Factual Background
ITC Limited, the proprietor of the iconic “Gold Flake” cigarette brand, approached the Court alleging large-scale manufacture and sale of counterfeit cigarettes in Raigad, Maharashtra. The company stated that the “Gold Flake” trademark dates back to 1905 and has remained continuously registered since 1942. It also holds copyright over the artistic works, packaging, and trade dress associated with the brand.
In 2024, ITC discovered illegal manufacturing activities involving fake Gold Flake cigarettes. Acting on its complaint, law enforcement authorities conducted a raid in October 2024 at a farmhouse in Raigad, uncovering a fully functional unit engaged in producing counterfeit cigarettes. An FIR was registered on October 25, 2024, followed by the filing of a charge sheet on May 2, 2025. ITC further informed the Court that laboratory analysis revealed the counterfeit cigarettes contained sawdust mixed with chemicals, rendering them hazardous to public health.
Procedural Background
The matter came before Justice Sharmila U. Deshmukh by way of an interim injunction application filed by ITC Limited in a civil suit alleging trademark infringement, copyright infringement, and passing off. ITC sought immediate restraint orders to prevent continued manufacture and circulation of the counterfeit products pending adjudication of the suit.
Issues
1. Whether ITC Limited had established a prima facie case of trademark and copyright infringement.
2. Whether the manufacture and sale of counterfeit “Gold Flake” cigarettes posed irreparable harm warranting interim injunctive relief.
3. Whether public interest and consumer safety considerations justified immediate court intervention.
Contentions of the Parties
ITC Limited contended that the seized counterfeit products were visually and structurally identical to genuine Gold Flake cigarettes, clearly infringing its registered trademarks and copyrighted artistic works. It emphasized its century-long reputation, extensive goodwill, and market presence. ITC also highlighted the grave health risks posed by the counterfeit cigarettes, given their unsafe composition, and argued that denial of interim relief would defeat the very purpose of injunctive protection.
The defendants, individuals allegedly involved in the illegal manufacturing operation, did not place any material on record to rebut ITC’s claims at this interim stage.
Reasoning and Analysis
The Court undertook a comparison between the seized counterfeit cigarette packets and ITC’s genuine Gold Flake packaging and found clear evidence of counterfeiting. It observed that ITC had produced sufficient material demonstrating long-standing statutory trademark rights, copyright ownership, commercial reputation, and widespread consumer recognition.
Justice Deshmukh placed significant emphasis on the public health dimension of the case, noting that the counterfeit cigarettes contained harmful substances and posed a serious threat to unsuspecting consumers. The Court held that denying interim protection in such circumstances would not only irreparably harm ITC’s goodwill and reputation but would also endanger public safety.
The Court concluded that ITC had successfully established a strong prima facie case, that the balance of convenience lay decisively in its favour, and that irreparable harm would ensue if the defendants were permitted to continue their activities.
Decision
Accordingly, the Bombay High Court restrained the defendants and all persons acting on their behalf from manufacturing, selling, distributing, or dealing in counterfeit “Gold Flake” cigarettes or any goods deceptively similar thereto. The defendants were also prohibited from using ITC’s trademarks, artistic works, or trade dress in any manner likely to mislead consumers.
The interim injunction will remain in force until the next date of hearing, scheduled for December 10, 2025.
In this case the plaintiff was represented by Mr. Ravi Kadam, Senior Advocate a/w. Mr.Rohan Kadam, Mr.Nimish Kothare, Mr.Nikhil Mutha, Ms.Ashwini Sonawane i/by M/s.Nanu Hormasjee & Co.
