Secondary Meaning and Dominant Feature Protection for “GOLD” in Cigarette Trade Marks: A Detailed Commentary on ITC Limited v. Pelican Tobacco Co Ltd & Ors. (Delhi High Court, 24 November 2025)

1. Introduction

This commentary examines the Delhi High Court’s judgment in ITC Limited v. Pelican Tobacco Co Ltd & Ors., CS(COMM) 221/2024, decided on 24 November 2025 by Justice Tejas Karia. The Court confirmed an ex parte ad-interim injunction restraining the defendants from using the marks “GOLD FLAME” and “GOLD FIGHTER” and associated labels/trade dress for cigarettes, on the ground that they infringe and pass off upon ITC’s long-standing “GOLD FLAKE” family of marks and trade dress.

The decision is important for at least four reasons:

It expressly recognises that the word “GOLD” – ordinarily a common or laudatory term – has, in the specific market for cigarettes, acquired secondary meaning and functions as the dominant and protectable feature of ITC’s “GOLD FLAKE” mark.
It applies the doctrine of initial-interest confusion (building on Under Armour Inc v. Anish Agarwal) in the context of cigarettes, including loose-stick sales.
It treats statutory packaging constraints under the Cigarettes and Other Tobacco Products (Prohibition of Advertisement and other Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003 (“COTPA”) as increasing the likelihood of confusion where limited branding space is copied.
It reaffirms that delay and third‑party use do not defeat an injunction where the defendant’s adoption is found to be prima facie dishonest, relying on Midas Hygiene and Hindustan Pencils.

This commentary sets out the factual background, summarises the judgment, analyses the precedents and legal reasoning, explains complex concepts in accessible terms, and evaluates the likely impact of the ruling on trade mark and passing off law, particularly in industries with packaging restrictions and for marks built around highly used words such as “GOLD”.

2. Summary of the Judgment

2.1 Parties and Marks

Plaintiff: ITC Limited – proprietor and user of the cigarette brand “GOLD FLAKE” and several variants for over a century, with multiple registered trade marks and copyright‑protected labels/trade dress.
Defendants 1 & 2: Pelican group companies – manufacturing, supplying and selling cigarettes under “GOLD FLAME” and “GOLD FIGHTER” and associated labels/trade dress.
Defendant 3: Dealer / bulk supplier of the defendants’ cigarettes, proceeded ex parte.

The plaintiff alleged that the defendants’ marks “GOLD FLAME” and “GOLD FIGHTER”, their labels and overall packaging / trade dress, are deceptively similar to ITC’s “GOLD FLAKE” marks, labels, and trade dress, and amount to:

statutory trade mark infringement,
copyright infringement in the artistic labels/trade dress, and
common law passing off.

An ex parte ad‑interim injunction had been granted on 13 March 2024 restraining use of the impugned marks and get‑up. ITC sought confirmation of that injunction (I.A. 5805/2024). Defendants 1 and 2 sought to vacate it under Order XXXIX Rule 4 CPC (I.A. 30198/2024), primarily on the grounds of delay, generic nature of the word “GOLD”, dissimilarity of marks and trade dress, and their alleged bona fide, long-standing adoption.

2.2 Central Issues

The Court essentially addressed the following issues:

Whether the defendants’ marks “GOLD FLAME” and “GOLD FIGHTER” and their trade dress are deceptively similar to ITC’s “GOLD FLAKE” marks and trade dress.
Whether ITC can claim exclusive or dominant-feature rights over the word “GOLD” in relation to cigarettes, notwithstanding its common/ laudatory character in general.
Whether allegations of delay / acquiescence and third‑party use of “GOLD” defeat ITC’s claim for interim injunction.
Whether initial-interest confusion and triple identity are made out on the facts.

2.3 Outcome

The Court held that:

ITC has established a strong prima facie case of infringement and passing off.
The impugned marks and trade dress are deceptively similar to ITC’s marks and trade dress, especially considering cigarettes’ mode of sale and consumer behaviour.
The word “GOLD”, although common in general, is arbitrary as applied to cigarettes and, due to ITC’s long and extensive use and reputation, has acquired secondary meaning and functions as the dominant feature of the “GOLD FLAKE” family.
This is a case of “triple identity” (identical / nearly identical marks, identical goods, and identical trade channels), leading to an inevitable likelihood of confusion.
Initial-interest confusion is clearly made out, especially given that cigarettes are often sold loose, with minimal visible branding at the point of purchase.
Delay does not bar injunctive relief where the defendants’ adoption is prima facie dishonest; mere knowledge and opposition proceedings do not amount to acquiescence.
The ex parte ad-interim injunction dated 13.03.2024 is confirmed and made absolute pending disposal of the suit, and the defendants’ application to vacate it is dismissed.

3. Factual and Legal Background

3.1 ITC’s “GOLD FLAKE” Brand and Rights

ITC’s mark “GOLD FLAKE” was:

Originally adopted by ITC’s predecessor around 1905,
Assigned to ITC in 1910, and
Registered in India since at least 1942 (Registration no. 7678 in Class 34: manufactured tobacco).

Over time, ITC obtained multiple trade mark registrations covering:

“GOLD FLAKE” as a word mark,
label / logo representations, and
various cigarette-related goods in Class 34 (tobacco, cigarettes, smokers’ articles, matches, etc.).

In addition, ITC secured copyright registrations for its artistic labels and trade dress, which includes the layout, colour scheme, roundel device, and overall packaging design. The brand has massive commercial presence; the judgment records cumulative turnover of ₹3,74,288 crores from 1996–2024, with ₹40,186 crores in FY 2023–24 alone.

The Madras High Court in Itc Limited v. Golden Tobacco Limited, 2018 SCC OnLine Mad 2437, had already recognised “GOLD FLAKE” as a well-known trade mark, a legally significant status under the Trade Marks Act, 1999.

3.2 Defendants’ Adoption of “GOLD FLAME” and “GOLD FIGHTER”

The defendants:

Filed several trade mark applications from around 2012 onward for marks such as “PARIS GOLD”, “FLAME”, “GOLD FLAME”, “GOLD FAME”, “GOLD FRAME” and device marks.
Claimed user of “GOLD FLAME” since 01.11.2015.
Manufactured and sold cigarettes under marks including “GOLD FLAME” and “GOLD FIGHTER”, using golden-coloured packaging and label/devices that ITC alleged were highly similar to its own “GOLD FLAKE” labels and trade dress.

ITC had opposed some of the defendants’ applications (e.g., in 2020), but according to ITC, actual infringing products at scale were discovered in the market (and on e-commerce platforms) around late 2023, following which ITC commissioned an investigation and initiated the present suit in 2024.

3.3 Procedural Posture

13 March 2024: Ex parte ad‑interim injunction granted under Order XXXIX Rules 1 and 2 CPC, restraining the defendants from using the impugned marks, labels, and trade dress.
Plaintiff’s application: I.A. 5805/2024 – to confirm and continue interim injunction.
Defendants’ application: I.A. 30198/2024 – under Order XXXIX Rule 4 CPC, to set aside/vacate the ex parte injunction.
Defendant No. 3: did not appear and was proceeded ex parte.

4. Analysis of the Judgment

4.1 Core Legal Issues and the Court’s Framing

Justice Karia begins by reiterating the basic function of a trade mark: it indicates the source or origin of goods or services and distinguishes one trader’s goods from another’s. A mark acquires distinctive character when consumers recognise it as such a source indicator. On the facts, the Court finds that:

“GOLD FLAKE” is strongly associated with ITC in the public mind,
ITC’s marks serve as source indicators, and
The defendants’ marks are deceptively similar to these, thereby infringing ITC’s registered marks and supporting passing off.

The Court then systematically applies:

the infringement and passing off tests developed in Supreme Court and Delhi High Court precedent,
the doctrines of initial-interest confusion and triple identity, and
the principles on delay / dishonest adoption, and descriptive/generic marks acquiring secondary meaning.

4.2 Precedents Cited and Their Influence

4.2.1 Infringement and Passing Off Tests

Case	Principle	Use in Present Judgment
Kaviraj Pandit Durga Dutt Sharma v. Navaratna Laboratories, AIR 1965 SC 980	In infringement, once the broad essential features of the registered mark are copied, infringement is made out. In passing off, additional elements such as misrepresentation and damage must be shown.	Used to emphasise that microscopic comparison is wrong; copying of essential features of “GOLD FLAKE” (especially “GOLD”) in “GOLD FLAME” suffices for a finding of prima facie infringement.
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73	Laid down comprehensive tests for deceptive similarity and passing off, especially in medicinal products; highlighted overall similarity, nature of goods, class of purchasers, mode of purchase, etc., and overruled restrictive views in S.M. Dyechem.	Invoked to support a broad, consumer-centric approach in assessing similarity; Court rejects defendants’ reliance on S.M. Dyechem, noting its overruling by Cadila.
Laxmikant Patel v. Chetanbhai Shah, (2002) 3 SCC 65	Recognised wide protection against passing off when there is established goodwill, misrepresentation, and likelihood of damage; emphasised overall similarity and misappropriation of reputation.	Supports the Court’s conclusion that ITC has considerable goodwill and that the defendants’ adoption is likely to cause confusion and ride on that goodwill.
Amar Singh Chawal v. Shri Vardhman Rice & General Mills, ILR (2009) VI Delhi 399	Delhi HC precedent on deceptive similarity and protection of trade dress / get‑up in passing off.	Cited as part of the chain of Delhi cases reinforcing that visual, structural and phonetic similarity can together create deception.
South India Beverages v. General Mills Marketing, 2014 SCC OnLine Del 1953	Developed the “overall impression” test for composite marks and emphasised that the dominant feature of a mark may be accorded more weight in assessing similarity.	Forms doctrinal basis for the Court’s focus on “GOLD” as the dominant and memorable component of ITC’s mark and the defendants’ marks.

4.2.2 Trade Dress and Get-up

Case	Principle	Application
Ruston & Hornby Ltd. v. Z. Engineering Co., AIR 1970 SC 1649	Infringement may be found even when an infringer adds his own house mark; addition of words like “INDIA” does not immunise infringement if the main part of the mark is copied.	Used to counter the defendants’ argument that the presence of “Pelican’s” on packaging negates passing off; mere addition of the defendants’ name cannot cure copying of the main mark and get‑up.
Gorbatschow Wodka Kg v. John Distilleries Ltd., 2011 SCC OnLine Bom 557	Trade dress, including bottle shape and get‑up, can be protected in passing off; copying of the distinctive shape and presentation can create misrepresentation.	Supports ITC’s argument that copying of colour scheme, layout, and key design elements on cigarette packs amounts to passing off, even if the word marks are not identical letter-for-letter.
Faber Castell & Anr. v. Cello Pens Pvt. Ltd. & Anr., 2016 (65) PTC 76 (Bom)	Recognised that get‑up and trade dress can themselves be distinctive and protectable, beyond mere word/logo marks.	Reinforces the Court’s finding that the defendants’ trade dress and labels, not just the words, closely imitate ITC’s packaging.

4.2.3 Initial-Interest Confusion

Case	Principle	Use in the Judgment
Parle Products Pvt. Ltd. v. J.P. & Co., Mysore, (1972) 1 SCC 618	When comparing marks and trade dress, the test is of overall similarity as perceived by an average person with imperfect recollection; minute differences are disregarded.	Underpins the Court’s rejection of a “microscopic” comparison and supports the view that smokers relying on imperfect recollection can be misled by similar packaging and marks.
Baker Hughes Limited v. Hiroo Khushalani & Anr., 1998 (V) AD (Delhi) 525	Early recognition that confusion at the initial stage of attraction, even if dispelled before purchase, can still amount to actionable confusion.	Forms the basis for the Court’s acceptance of “initial-interest confusion”, especially where a consumer is drawn to the defendant’s product by similarity to the plaintiff’s mark.
Under Armour Inc v. Anish Agarwal, 2025 SCC OnLine Del 3784	(As summarised by this judgment) Clarifies that confusion at the preliminary stage, even if the consumer ultimately realises the true origin at the point of purchase, can satisfy deceptive similarity under Section 29 of the Trade Marks Act.	Directly applied to hold that even transient confusion in the early stages – e.g., a smoker approaching a counter believing “GOLD FLAME” related to “GOLD FLAKE” – is legally sufficient.

4.2.4 Delay, Dishonest Adoption, and Third-Party Use

Case	Principle	Effect in Present Case
Midas Hygiene (P) Ltd. v. Sudhir Bhatia, 2004 SCC OnLine SC 106	In trade mark infringement, once a prima facie case is shown and adoption appears dishonest, an injunction must ordinarily follow; delay is not a bar.	Used to reject the defendants’ heavy reliance on delay; Court emphasises that dishonest adoption overrides delay-based objections.
Hindustan Pencils Pvt. Ltd. v. India Stationery Products, 1989 SCC OnLine Del 34	Similarly holds that delay does not legitimise continuing infringement; where deception is clear, injunction should not be refused solely due to lapse of time.	Reinforces the grant of injunction despite alleged knowledge since 2017.
Essel Propack Ltd. v. Essel Kitchenware Ltd., 2016 SCC OnLine Bom 937	Bombay HC case where prolonged inaction contributed to refusal of injunctive relief.	Invoked by defendants but distinguished: here, because of prima facie dishonest adoption, Midas Hygiene governs.
Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1	Emphasised the need for proof of reputation and knowledge in India at relevant time for transborder reputation claims; also discussed delay.	Cited for delay principle by defendants, but the Court prefers the line of authority in Midas Hygiene/ Hindustan Pencils in dishonesty scenarios.
Pankaj Goel v. Dabur India Ltd., 2008 SCC OnLine Del 1744	Use by third parties of a similar mark is not a defence to infringement; a plaintiff is not obliged to sue every infringer.	Applied to dismiss defendants’ invocation of other “GOLD” marks and golden packaging in the market.
Automatic Electric Ltd. v. R.K. Dhawan, 1999 SCC OnLine Del 27; R.N. Gosain v. Yashpal Dhir, (1992) 4 SCC 683	Doctrine of “approbate and reprobate”: a party cannot both claim exclusive rights in a term and later argue it is generic.	Used against defendants who themselves sought registrations for “GOLD FLAME” while arguing that “GOLD” is generic.

4.2.5 Generic / Descriptive Words and Secondary Meaning

Case	Principle	Relevance
Jain Riceland Pvt. Ltd. v. Sagar Overseas, 2017 SCC OnLine Del 11305	Generic/common terms in a trade (e.g., related to rice) cannot ordinarily be monopolised; descriptive elements are weak.	Relied on by defendants to say “GOLD” is common and non-protectable; Court distinguishes it by finding “GOLD” arbitrary and with secondary meaning for cigarettes.
YATRA ONLINE LIMITED v. MACH CONFERENCES AND EVENTS LIMITED, (2025) SCC OnLine Del 5610	(As summarised) Generic / commonly descriptive words cannot be protected through passing off.	Similarly, the Court distinguishes this line of reasoning in light of the specific evidence of ITC’s long use and secondary meaning.
Wow Momo Foods Private Limited v. Wow Burger & Another, CS(COMM) 1161/2024 (single judge) and DB appeal 2025:DHC:9320-DB	Single judge held “WOW” too common to monopolise; DB reversed, holding “WOW” the dominant feature and granting protection.	The Court follows the DB decision, applying the dominant feature test to treat “GOLD” as the key distinctive element in cigarette marks.
Pernod Ricard India (P) Ltd. v. Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701	(As summarised) Even descriptive marks can be protected if they acquire secondary meaning through extensive and exclusive use and stand uniquely associated with a trader.	Forms the doctrinal anchor for holding that “GOLD” in relation to cigarettes has acquired secondary meaning for ITC.

4.3 Court’s Legal Reasoning

4.3.1 Distinctiveness, Well-known Status, and Secondary Meaning of “GOLD”

The Court first acknowledges the well-known status of “GOLD FLAKE” (as recognised by the Madras High Court) and ITC’s multi-decade registration and use. It then goes further and articulates a crucial holding:

In ordinary language, “GOLD” is a common, laudatory term, but in relation to cigarettes it is arbitrary – it does not describe any inherent characteristic of cigarettes.
ITC has used “GOLD FLAKE” for over a hundred years and built enormous goodwill and market share; consumers have come to associate “GOLD” in the cigarette context with ITC.
Accordingly, “GOLD” has acquired secondary meaning in the cigarette industry, becoming “indelibly associated with the Plaintiff’s product” and functioning as a source identifier.

By explicitly invoking Pernod Ricard India, the Court holds that the plaintiff has met the threshold for rights in a descriptive or common term through secondary meaning, and thus ITC can:

enforce rights where the dominant feature “GOLD” is appropriated in relation to cigarettes, and
claim infringement even when the competing composite mark is “GOLD FLAME” rather than “GOLD FLAKE” verbatim.

This is doctrinally significant because it squarely addresses and distinguishes earlier Delhi decisions which had been hesitant to grant exclusive rights in common words (as with “Yatra” or, at first instance, “Wow”).

4.3.2 Similarity of Marks and Triple Identity

The Court notes:

The marks “GOLD FLAKE” and “GOLD FLAME” are visually and phonetically similar; replacing “K” with “M” does not dispel similarity.
“GOLD FIGHTER” also retains “GOLD” as the leading word, coupled with similar colour and presentation.
Both parties deal in identical goods: cigarettes.
They share the same trade channels (retail outlets, e-commerce) and similar consumer base.

Justice Karia characterises the scenario as one of “triple identity”:

Identity (or near-identity) of marks,
Identity of goods,
Identity of trade channels and consumers.

In such situations, Indian courts are particularly quick to infer a likelihood of confusion; the Court holds that the marks are “so close … that they are indistinguishable” to an average consumer with imperfect recollection.

4.3.3 Trade Dress and Packaging – Effect of COTPA Restrictions

Beyond the word marks, ITC alleged, and the Court accepts, that the defendants copied the overall get‑up:

golden colour scheme,
label layout and structure,
use of a roundel‑like device on cigarette sticks,
general packaging appearance.

COTPA mandates that 85% of the cigarette pack be covered by statutory health warnings, leaving limited space (15%) for branding. The Court reasons that:

The limited branding area makes the remaining brand space more prominent in consumer perception.
Thus, where in that confined space the defendant closely imitates the plaintiff’s mark and trade dress, the likelihood of confusion is heightened.
The replication of a similar roundel on the cigarette sticks themselves underscores deliberate copying.

This is a nuanced development: statutory public-health labelling requirements, intended to reduce tobacco promotion, unintentionally compress the visual brand message, making small similarities particularly potent in causing confusion.

4.3.4 Consumer Behaviour, Cigarettes Sold Loose, and Initial-Interest Confusion

The Court places considerable weight on the practical realities of cigarette purchases:

Cigarettes are purchased by all classes of consumers, including persons of limited literacy or familiarity with English.
They are often bought not as full packs but as loose sticks, where the small branding – often a word and a device band – plays a disproportionate role.
Consumers typically rely on an overall impression and imperfect recollection rather than careful side‑by‑side comparison.

Against that background, the Court adopts the doctrine of initial-interest confusion, via Under Armour and earlier Delhi cases:

Even if, after buying and smoking a cigarette, a consumer realises it is not “GOLD FLAKE” but some other brand, the initial confusion which caused them to pick the pack/stick is sufficient for infringement.
The infringer’s commercial goal may be achieved merely by diverting the consumer’s initial interest or attention at the point of sale, regardless of post-purchase realisation.
The defendants’ argument that smokers know “the taste” of their preferred brand is dismissed as irrelevant; confusion occurs before consumption, at the purchase decision stage.

Thus, in a low-involvement, habitual purchase such as cigarettes, small visual and phonetic cues (especially the word “GOLD” and golden packaging) can be enough to create initial-interest confusion, which is actionable.

4.3.5 Delay, Opposition Proceedings, and Alleged Acquiescence

Defendants invoked:

ITC’s knowledge of “GOLD FLAME” applications and opposition since at least 2017,
a seven-year gap between alleged initial awareness (2017) and the present suit (2024), and
cases including Essel Propack and Toyota.

The Court answers this on several levels:

Opposition ≠ Acquiescence: ITC actively opposed the defendants’ applications; this is the opposite of consent.
No obligation to sue each infringer immediately: ITC is not expected to hunt down every small infringer or file multiple suits at the earliest possible moment.
Midas Hygiene Principle: Where adoption is prima facie dishonest, delay does not bar injunction.
Discovery of Products: ITC asserts that actual infringing products became visible in the open market/e-commerce only around 2023, after which the suit was promptly filed.

Finding the defendants’ adoption unexplained and thus prima facie dishonest, the Court follows Midas Hygiene and Hindustan Pencils, rather than allowing delay to defeat interim relief.

4.3.6 Third-Party Use and the “Common to Trade” Argument

The defendants also relied on:

Other tobacco products using “GOLD” or gold-coloured packaging,
The alleged common and laudatory nature of the term “GOLD”, and
Recent Delhi cases, e.g., Yatra Online and the first instance view in Wow Momo, to argue that generic/descriptive words cannot be monopolised.

The Court responds by:

Reiterating, via Pankaj Goel, that the plaintiff is not bound to sue every infringer, and uncontrolled third-party use does not legalise an infringer’s conduct.
Noting that the defendants themselves sought registrations for “GOLD FLAME” and other “GOLD” formative marks, thereby estopping them (under Automatic Electric and R.N. Gosain) from now arguing that “GOLD” is generic and incapable of protection.
Holding that, in the specific context of cigarettes, “GOLD” has acquired secondary meaning and is thus protectable when used in a confusingly similar manner.

Thus, while the Court does not say that no one can ever use “GOLD” in any context, it effectively grants ITC a very high degree of exclusivity regarding “GOLD” as a cigarette brand indicator.

4.3.7 Balance of Convenience and Irreparable Harm

On equitable relief, the Court finds:

ITC has shown prior use, massive goodwill, and well-known mark status.
The defendants’ use appears dishonest and intended to ride on ITC’s reputation.
Any loss to defendants from stopping a recently built, infringing business is outweighed by the potential harm to ITC’s brand equity and the public interest in avoiding deception.
Actual quantification of ITC’s loss is not required in trade mark infringement; mere likelihood of confusion suffices.

Accordingly, the balance of convenience and the risk of irreparable injury both favour continuation of the injunction.

5. Impact and Broader Significance

5.1 Strengthening Protection for Common / Laudatory Elements Through Secondary Meaning

Perhaps the most consequential aspect of this decision is its explicit holding that “GOLD” has acquired:

secondary meaning in relation to cigarettes, and
the status of a dominant feature of ITC’s house brand “GOLD FLAKE”.

This has several implications:

It moves the law further towards a fact-intensive, market-specific analysis: even a common word can become strongly protectable in a narrow product category if backed by long, exclusive and high-volume use.
It harmonises Delhi’s approach with the Supreme Court’s secondary meaning doctrine in Pernod Ricard India: descriptive or laudatory marks are not per se unprotectable, but their protection depends on evidence of acquired distinctiveness.
It tempers earlier dicta (e.g., Jain Riceland, Yatra Online) that seemed to reject distinctiveness of generic/common words more categorically, by emphasising the context (here: cigarettes) and consumer association.

For brand owners, the case underscores the strategic value of building strong, consistent brand association even with common words; for competitors, it is a warning that riding close to a famous brand’s key element, even if common, invites serious legal risk.

5.2 Consolidation of the Initial-Interest Confusion Doctrine in Indian Trade Mark Law

By explicitly citing and applying Under Armour, this judgment entrenches the doctrine of initial-interest confusion:

Confusion that occurs at the first moment of exposure – when a consumer’s attention is drawn to an infringing mark – is actionable, even if the consumer later realises the true source.
This is particularly relevant for low-involvement, high-frequency purchases like cigarettes, snacks, or small FMCG items, where consumers decide quickly and rarely engage in detailed scrutiny.
Brand owners can now more confidently frame arguments around this doctrine, especially where the defendant’s strategy appears aimed at exploiting brand recall rather than replicating the entire product experience.

5.3 Packaging Restrictions and Trade Dress Analysis

The Court’s reliance on COTPA’s 85% health warning requirement as a factor that increases the likelihood of confusion is notable:

It shows how regulatory constraints can indirectly affect trade mark analysis by intensifying the importance of the limited brand space that remains.
In tobacco and similar regulated sectors (e.g., other tobacco products, possibly future plain-packaging regimes), courts may treat small visual similarities in that limited space as highly significant.
Competitors in such sectors must therefore be especially cautious not to echo the colour schemes, devices, or layout of an established brand even in a compressed brand area.

5.4 Delay, Opposition Proceedings, and Litigation Strategy

The judgment reiterates that:

Trade mark oppositions at the Registry and infringement actions in court are distinct; opposition does not bar later civil suits and does not constitute acquiescence.
Mere time-lapse does not legalise dishonest adoption; Midas/Hindustan Pencils continue to be strong authority.

From a strategic standpoint:

Brand owners should nonetheless maintain a paper trail of objections (oppositions, notices), which later serves to counter claims of acquiescence.
Defendants relying on delay must show good-faith adoption and independent conceptualisation; unexplained similarity will incline courts to view them as dishonest users.

5.5 Impact on the Tobacco and FMCG Sectors

For the tobacco industry in particular, this decision:

Confirmingly affirms ITC’s dominant market position and extensive protection around the “GOLD FLAKE” family.
Signals that attempts to create “GOLD”-centric cigarette brands that visually or phonetically resemble GOLD FLAKE (e.g., “GOLD FLAME”) are likely to face strong judicial resistance.
Sets a template for trade dress analysis when statutory warnings drastically reduce the portion of the packaging available for branding.

More broadly, other FMCG sectors should expect courts to:

give weight to dominant-feature similarity (particularly the leading word in a composite mark),
treat third-party infringers as no defence, and
scrutinise the overall impression rather than isolated difference in letters or shapes.

6. Simplifying Key Legal Concepts

6.1 Trade Mark, Trade Dress, and Well-known Mark

Trade Mark: Any sign (word, logo, device, etc.) that identifies the commercial source of goods/services and distinguishes them from competitors’ goods/services.
Trade Dress: The overall visual appearance of a product and/or its packaging – including colours, shapes, layout, and design elements – that can, over time, signify the source.
Well-known Trade Mark: A mark that has gained such a high level of recognition among the public that its use even on unrelated goods/services can cause an unfair advantage or harm. Indian law grants enhanced protection to such marks.

6.2 Secondary Meaning and Dominant Feature

Secondary Meaning: When a descriptive or common word (like “GOLD”) is used so intensively and continuously by a trader for particular goods that the public begins to associate that word primarily with that trader’s goods, it acquires “secondary meaning”. At that point, the trader can claim trade mark protection.
Dominant Feature: In a composite mark (e.g., “GOLD FLAKE”), some part may be more distinctive or memorable (here, “GOLD”). Courts may focus on that element in assessing similarity and confusion.

6.3 Initial-Interest Confusion

Initial-interest confusion occurs when:

A consumer’s initial attention is captured by a similarity to another’s mark, leading them to consider or approach the infringer’s product,
even if, at the final stage, the consumer realises the true source of the goods.

This doctrine recognises that:

the infringer gains unfair advantage simply by leveraging the brand owner’s reputation to attract initial interest,
so such transient confusion is enough for infringement, particularly for quick, low-involvement purchases.

6.4 Triple Identity

Triple identity refers to cases where:

The marks are identical or very nearly so,
The goods or services are identical, and
The trade channels and purchasers are identical or overlapping.

In such scenarios, the likelihood of confusion is especially high, and courts are inclined to grant strong relief to the trade mark owner.

6.5 Delay, Laches, and Acquiescence

Delay/Laches: A plaintiff’s slowness in suing may, in some cases, weigh against granting equitable relief. But in trade mark cases involving dishonest adoption, courts often refuse to let delay defeat injunctions.
Acquiescence: A higher threshold than mere delay; requires some positive act of encouragement or consent by the rights holder to the infringer’s use. Mere knowledge and silence or pending opposition does not equal acquiescence.

7. Conclusion

The Delhi High Court’s judgment in ITC Limited v. Pelican Tobacco Co Ltd & Ors. is a robust affirmation of trade mark and trade dress protection in favour of a long-established brand in a heavily regulated industry. By:

recognising “GOLD” as having acquired secondary meaning and dominant-feature significance in the cigarette market,
embracing the doctrine of initial-interest confusion,
treating statutory packaging restrictions as intensifying the risk of confusion,
reaffirming that delay does not shield dishonest adoption, and
dismissing third‑party use as a defence,

the Court sets a powerful precedent likely to influence future trade mark litigation, especially in FMCG and regulated product sectors.

While the decision arises at an interim stage and the final trial may examine the evidence more closely, the reasoning and the articulation of key doctrines – secondary meaning, dominant feature, initial-interest confusion, and triple identity – will carry substantial persuasive authority. For both brand owners and competitors, the case serves as a clear signal: where a word, even a common one, has been transformed by decades of use into a strong source identifier, attempts to appropriate it in overlapping markets, particularly with similar trade dress, will be viewed as prima facie dishonest and restrained by the courts.