The Tea Board holds the Darjeeling GI and a certification mark for tea. ITC named an executive lounge at its Kolkata hotel the “Darjeeling Lounge”. The question was whether rights in a tea GI reach a room in a hotel — and the answer turned on two structural features of Indian law that are easy to miss.
The parties and the facts
Appellant: The Tea Board, India Respondent: ITC Limited GI: Darjeeling Tea Forum: Division Bench, Calcutta High Court
The Tea Board holds the well-known GI “Darjeeling” and a logo of a woman holding tea leaves, together with the certification trade mark “Darjeeling” under the Trade Marks Act, in connection with tea.
ITC used “Darjeeling Lounge” as the name of the executive lounge at its Kolkata hotel, the ITC Sonar. The Tea Board sued for infringement of the GI and the certification marks, and for passing off and dilution. The single judge rejected the claim, and the Tea Board appealed.
The issues
- Whether a certification trade mark entitles the proprietor to restrain a hospitality business from naming a lounge “Darjeeling Lounge”, where tea is among the beverages served but is not necessarily grown in Darjeeling.
- Whether that use violates rights conferred by the Geographical Indications Act.
The GI point: goods, not services
The court examined the objects and reasons of the GI Act, describing it as an Act to provide for the registration and better protection of geographical indications relating to goods.
In that context, the single judge was held right to conclude, prima facie, that registration under the GI Act in respect of the goods “tea” does not confer a right over the word “Darjeeling” — a geographical name — such as to prevent the defendant from rendering hospitality services under a lounge of that name.
This is the structural point. The GI Act protects goods. It does not create a general monopoly over a place name, and it does not extend into services. A GI proprietor whose registration covers tea cannot use it to control the use of the geographical term across unrelated sectors.
The certification mark point
The second holding is the more technically interesting one, and it is frequently overlooked by certification mark owners.
Section 68 of the Trade Marks Act, dealing with certification trade marks, specifically excludes the application of Section 29 — the ordinary infringement provision. So the protection conferred by Section 29 was not available to the Tea Board as a certification mark holder.
Instead, a certification mark proprietor’s rights come from Section 78, enforced through Section 75:
- Section 78 gives the registered proprietor of a certification mark the exclusive right to use the mark in relation to the goods or services for which it is registered.
- Section 75 provides that this right is infringed where a person, not being the proprietor or authorised by them, uses in the course of trade a mark identical or deceptively similar to the certification mark, in relation to goods or services for which it is registered, in such manner as to render the use likely to be taken as use as a trade mark.
Compare Section 28, which gives an ordinary registered proprietor the exclusive right to use the mark and to obtain relief in respect of infringement in the manner provided by this Act. That final phrase is conspicuously absent from Section 78 — and correspondingly absent from Section 75.
The Tea Board had argued infringement under Section 29(5). But Section 29 gives effect to Section 28, and the language connecting the two has no counterpart in the certification mark provisions. The claim was therefore misconceived at the level of which provision applied.
On the facts, the court held that using “Darjeeling” for a lounge does not put a person of average intelligence in any difficulty distinguishing between Darjeeling tea and a hotel lounge, and confusion as to whether food or beverages served there originate with the Tea Board was not likely to arise.
A view on it
There is something odd about the Tea Board’s approach. It would have been understandable had ITC used “Darjeeling” for a food product or other goods in the class covered by the registration. Fearing passing off is logical — but going so far as to prevent use of a name where an ordinary person can plainly tell the difference is another matter.
Counterfeit products certainly can be sold under a famous name. But here there was no product under the mark, and no use of the mark’s logo. Protecting a mark is essential; going overboard with protection reads as insecurity.
The durable lessons are the two structural ones: GIs protect goods, not services, and certification marks are enforced under Sections 75 and 78, not Section 29. Both are worth knowing before framing a claim.
The takeaways
- The GI Act protects goods — it confers no monopoly over a place name for services.
- Section 68 excludes Section 29 for certification marks.
- Enforce certification marks under Sections 75 and 78, whose language differs materially.
- Confusion must still be plausible — a lounge is not a packet of tea.
Frequently asked questions
Does a geographical indication protect services? No — the GI Act provides for the registration and protection of geographical indications relating to goods.
Can a certification mark owner sue under Section 29? No — Section 68 excludes the application of Section 29 to certification trade marks; the relevant provisions are Sections 75 and 78.
What does Section 75 require? Use in the course of trade of an identical or deceptively similar mark, for goods or services for which the certification mark is registered, in a manner likely to be taken as use as a trade mark.
Does holding a GI stop anyone using the place name? No — a GI for particular goods does not confer a general monopoly over the geographical name.
Useful official resources
- The Geographical Indications of Goods Act, 1999
- The Trade Marks Act, 1999