India: Geographical Indication And Its Use As Service Marks

Last Updated: 3 June 2019
Article by Smriti Yadav and Shwetank Tripathi

Most Read Contributor in India, August 2019

In the final judgment passed by Calcutta High Court in Tea Board, India v ITC Limited, CS 250 of 2010 ("suit"), the Court allowed ITC Limited ("Defendant") to continue the use of its service mark 'Darjeeling Lounge' for one of its refreshment lounges in its five star hotel 'Sonar Bangla' in Kolkata. The suit was dismissed with costs of INR 1,00,000 upon Tea Board, India ("Plaintiff").

In 2010, the Plaintiff filed the suit before the Calcutta High Court inter alia for permanent injunction against the Defendant's use of the mark 'Darjeeling Lounge' for its refreshment lounge services falling in class 41 viz. offering food items and all kinds of beverages, alcoholic and non-alcoholic including Darjeeling tea. The Plaintiff contended that the Defendant's use and application for the mark 'Darjeeling Lounge' amounted to infringement of Plaintiff's registered geographical indication, registered certification, trademarks and copyright along with passing off, unfair competition, dilution etc.

The interlocutory application filed by the Plaintiff was dismissed by the Learned Single Judge vide order dated 20 April 2011 ("interim order") which inter alia observed that the Plaintiff did not have a prima facie case inasmuch as its registered geographical indication is in respect of 'tea' (i.e. goods) and the Defendant was using the mark 'Darjeeling Lounge' in respect of its hospitality 'services' over which the protection under the Geographical Indications of Goods (Registration and Protection) Act, 1999 ("GI Act") does not extend.

The above interim order was not disturbed by the Division Bench of the Calcutta High Court as well as the Hon'ble Supreme Court, which vide order dated 22 January 2016 in a special leave petition bearing SLP(C) 32282 of 2011, relegated the matter back to the Learned Single Judge of the Calcutta High Court for expeditious disposal without opining on the merits of the matter. Accordingly, the suit was finally heard and decided vide judgment and order dated 4 February 2019.

On the issue of infringement of registered geographical indication by the Defendant, the Court confirmed the interim order inter alia holding that the GI Act extends only to 'goods' ('tea' in the present case) and not 'services'. Therefore, the Defendant's use of the mark 'Darjeeling Lounge' in respect of its hospitality services did not infringe the Plaintiff's registered geographical indication.

On the issue of infringement of certification trade mark or dilution thereof by the Defendant, the Court observed that rights in a certification trade mark, including a right to initiate an infringement action, as provided under Sections 75 and 78 of the Trade Marks Act 1999 ("Trade Marks Act") have limited scope as compared to the rights conferred under Sections 28 and 29 of the Trade Marks Act which applies to any other regular trade mark. The Court observed that Section 69 (c) of the Trade Marks Act has specifically excluded the application of Sections 28 and 29 of Trade Marks Act to the certification trade mark and thus the rights conferred under Sections 75 of the Trade Marks Act are restricted/limited to the goods and services for which the certification trade mark is registered and it cannot be extended to any other goods and services. The Court held that the Plaintiff's trade marks were registered as certification trade marks in respect of 'tea' and that such registration bestowed upon the Plaintiff, to the exclusion of others, the limited right to certify that a particular brand of tea originates from Darjeeling. The Court found that since the Defendant was not using the trade mark 'Darjeeling Lounge' in respect of the goods for which the certification trade marks were registered viz. 'tea', it did not infringe the Plaintiff's rights in the registered certification trade marks.

On the common law actions of passing off and unfair competition, the Court held against the Plaintiff on the ground that the Plaintiff and the Defendant were engaged in entirely different businesses, and they were not 'competitors', and therefore, there was no question of passing off or unfair competition.

Interestingly, the suit was also held to be barred by limitation. Section 26(4) of the GI Act contains a special limitation period. It prohibits any action against the use or registration of a trade mark after the expiry of 5 years from the date on which such trade mark became known to the registered proprietor / authorised user of the geographical indications. In this case, admittedly, the Plaintiff came to know of the Defendant's trade mark 'Darjeeling Lounge' when its application for trade mark was published in the Trade Marks Journal in April 2005. The Court held that since the suit was filed in October 2010 i.e. after more than 5 years of acquiring knowledge of the Defendant's trade mark, the same was barred by limitation.

The Court did not delve into the issue of copyright infringement as the same was not pressed at the time of arguments. However, the Court observed that the Defendant was not using any logo similar to the Plaintiff's registered certification trade marks, and hence, there was no infringement of copyright.

Conclusion:

This judgment is one of the very few cases relating to the infringement of geographical indications in India. The judgment also clarifies the restrictive rights conferred upon certification trade marks as compared to any other regular trade mark. The highlight of the judgment is that it elucidates that the GI Act extends only to 'goods' and not to 'services'. However, it is to be tested whether a registered geographical indication is free to be used as service marks in all cases, as much will also depend on the kind of service industry in which a registered geographical indication is used and whether such use can cause confusion or deception especially when rival businesses are similar.

The content of this document do not necessarily reflect the views/position of Khaitan & Co but remain solely those of the author(s). For any further queries or follow up please contact Khaitan & Co at legalalerts@khaitanco.com

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