Appellant: The Tea Board, India

Respondent: ITC, Limited

GI: Darjeeling Tea

Decision making Authority: Division Bench of Kolkata High Court

Facts:

  • The Tea Board of India holds the famous GI “Darjeeling” and the logo of a woman holding tea leaves, as well as the certification trade mark “Darjeeling” under the Trade Marks Act, in connection with “tea”.
  • ITC, Limited used “Darjeeling Lounge” as the name for its executive lounge at its Kolkata hotel, the ITC Sonar.
  • The Tea Board had previously filed a suit against ITC for using the word Darjeeling for their lounge. The suit mainly revolved on issues of infringement of the GI and the certification TMs, as well as for passing off and dilution.
  • The matter was rejected by the one judge bench, due to which an appeal was made before the Division bench of the Kolkata high court.

Issues:

  • Whether by virtue of certification trade mark, the plaintiff can restrain the defendant for infringement and passing off, who is carrying a business of hospitality from naming one of its lounges in the hotel as “DARJEELINGLOUNGE”, where among the beverage s and foods served to its customers, tea is also one of the items which is not necessarily restricted to the one grown only in the district of Darjeeling?
  • Whether the use of word “DARGILING” by the defendant for naming one of its lounges in the hotel as “DARJEELING LOUNGE” violates the rights conferred by the Geographical Indication Act?

Sections/Acts Referred:

  • Section 75 of the Trademarks Act
  • Section 78 of the Trademarks Act
  • Section 29 of the Trademarks Act
  • Section 78 of the Trademarks Act
  • Section 68 of the Trade Marks Act

Appellant Argument:

The appellant argued that, by using the name and logo DARJEELING of the original GI in any manner whatsoever and passing off or by attempting to pass off its business or services so as to discredit the fame of DARJEELING Tea as a Geographical Indication. Thus misleading the people into believing that the nature of the beverages sold at ITC Sonar is same as that of the original DARJEELING tea. Hence, by using the name DARJEELING or logo, create confusion in the minds of any person with an average intelligence.

Respondent’s argument:

The respondent denied to all the statements made by the appellant and stated that nowhere did ITC have an intention to hurt or use the reputation or name earned by the appellant.

Judgment:

The court went on to specify the statements of the object and reason of enacting the G.I Act and said that “based on the object and the preamble of the said Act, it has described as an Act to provide for the registration and better protection of geographical indications relating to goods. Court opined that  in the context of the G. I. Act, the learned Single Judge was right in prima facie holding that the right conferred on registration under the G.I Act in respect of the goods “tea”, does not confer any right over the word “Darjeeling”, a geographical name, so as to prevent the defendant from rendering its services of hospitality to the public by naming one of the lounges of its hotel as “Darjeeling Lounge” as the object of the G. I. Act is to give better protection of geographical indications relating to goods.”

“The division bench held that Section 68 of Trade Marks Act which deals with certification trademarks specifically exclude application of Section 29 i.e. infringement of registered trademarks. Therefore, protection conferred under Section 29 of the Act is not available to the plaintiff being holder of a Certification Trade Mark. But by virtue of registered certifications, the holder thereof is entitled to protect its right conferred under Section 78 of the Act as provided in Section 75 of the said Act. Court went on to discuss Sections 28 and 29 for the purpose of comparing of nature of rights accrued and the infringement mentioned therein with those provided in Sections 75 and 78 of the Act.

Section 78 states that, the registration of a person as a proprietor of certification trade mark in respect of any goods or services shall if valid, give to that person the exclusive right to the use of the mark in relation to those goods or services. Section 75 states that the right conferred by section 78 is infringed by any person who, not being the registered proprietor of the certification trade mark or a person authorized by him, uses in the course of trade, a mark, which is identical with or deceptively similar to the certification trade mark in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken as being a use as a trade mark.

Whereas 28 states that subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of trade mark in the manner provided by this Act. Here the expression “to obtain relief in respect of infringement of trade mark in the manner provided by this Act.” which is conspicuously absent in Section 78 of the Act.

Section 29 of the trademarks act talks about the infringements of the rights conferred in Section 28 of the act. The appellant had basically argued as per Section 29(5) stating that there had been an infringement because ITC had used the registered trademark of Darjeeling Tea. But on the contrary the court held that, the phrase indicated in Section 29 was noticeably absent in Section 75 of the Act.

On the basis of the points stated the court has opined that the usage of the term DARJEELING for a lounge does not create a situation where any person with an average intelligence would find it difficult to differentiate between the already existing Darjeeling tea and the lounge DARJEELING. Plus any form of confusion wherein any beverage or food article provided in the lounge might belong to the Tea Board of India is not bound to happen.

Personal Opinion:

It is really funny to the see the behaviour of the Tea Board of India. It would have been acceptable if the respondent had been indulged in using the name Darjeeling for a food product or maybe any other good which has been registered under the same class like that of the Darjeeling Tea. My basic opinion is that, having a fear of passing off is logical, but going to a certain limit of preventing the use of a name to an extent where even a common man can differentiate is simple and pure form of lunacy. I agree that counterfeit products can be sold under this specific famous name. But neither was there a product under name of the subject mark, nor was there the utilization of the symbol of the subject mark. That ways, a simple thought is that “protecting a mark is essential, but going overboard with protection is being restlessly insecure.”