India: Darjeeling - Tea Or Lounge

Last Updated: 17 May 2012
Article by Abhai Pandey

The dispute is on "DARJEELING" between Tea Board of India and ITC Limited. The Tea Board asserts exclusivity over "Darjeeling" and ITC maintains that there is more to "Darjeeling" than the tea that is grown there.

Tea Board is the registered owner of two sets of marks in connection with tea. One is the word "Darjeeling" and the other is a round device featuring profile of a lady holding two-leaves-and-a-bud and the word "Darjeeling" spelt out on the edge running from 9 o'clock to 12 o'clock. The word and device marks are independently registered as a geographical indication (GI) and as a Certification trademark. The Tea Board's grievance is in naming of a section of ITC's luxurious hotel (ITC Sonar) as the "Darjeeling Lounge". It claims that the use of "Darjeeling" in the name of the exclusive lounge is an infringement and passing off of the claimant's registration of "Darjeeling" geographical indication and the certification mark and also a dilution of the "Darjeeling" brand.

Tea Board filed a suit to restrain ITC from using or conducting or marketing in any manner or in any way carrying on its business at its hotel - ITC Sonar, by using in any manner whatsoever the name "Darjeeling Lounge" or any other name or mark or word which is phonetically or structurally similar or identical or deceptively similar to the registered geographical indication "DARJEELING", the name and logo in the name of the Tea Board in any manner whatsoever and/or passing off or attempting to pass off its business or services so as to discredit the fame of DARJEELING Tea as a Geographical Indication and/or to mislead persons as to the nature of the beverages sold at ITC Sonar so as to allude a nexus with the registered geographical indication for the name DARJEELING or logo and to confuse person in any manner.

Under the application for interlocutory injunction, concerned with the existence of a prima facie case of the Tea Board against ITC based on the Trade Marks Act, 1999 (TM Act) and The Geographical Indications of Goods (Registration & Protection Act, 1999 (GI Act), ITC sought to cut the claim contending that grievances with respect to rights breached under the GI Act is only restricted to goods and not against any services. ITC wanted the GI Act to be understood as providing protection only to goods against goods and not having room enough to allow a complaint by a registered proprietor of a GI against any service. The argument put forth was that the GI Act seeks to protect indications with respect to goods only, identified on account of quality or reputation or other characteristics attributable to their geographical origin and cannot be extended to any services.

The Court looked through the provisions of the GI Act and also the Trade Marks Act with respect to certification marks as the complaint of the Tea Board also encompassed the violation of its rights under registered certification mark.

The Court, while observing that there would be a cause of action in an unauthorized use of a good's certification mark by any service provider, felt that in case of GI there could not be a complete exclusion of a cross category complaint in the face of the deeming provisions on use of a GI constituting unfair competition and an action for passing off. The use of "Darjeeling" by ITC is not in connection with any designation or presentation of good therefore the infringement as given in section 22(1) of the GI Act is not available to Tea Board, thus held the Court. Reading from section 22(2) on use of a registered GI in a manner constituting unfair competition including passing off, the Court also drew parallel with what passing off implies in trade mark law. The Court, while reiterating the factors on which an action of passing off would lie, did not find any exclusive nexus of "Darjeeling" with the product of Tea Board, and thereby concluded that the word "Darjeeling" could not be under Tea Board's exclusive use by virtue of its registration as a GI or as a certification mark.

Thus the Tea Board's application for interlocutory relief was dismissed with the learned Single Judge's (S.J.) finding that it failed to prove a strong prima facie case and also on the balance of convenience. An appeal was preferred against the above order.

The division bench (DB), with an observation on the scope of investigation in an appeal against a discretionary order like in an interim injunction, proceeded to determine whether the S.J. in the facts of the present case was justified in refusing the interim relief during the pendency of the suit. For this the Court tried to seek answer to the question that – whether by virtue of registrations under G.I. Act and TM Act, Tea Board can restrain ITC from naming one of its lounges in hotel as "DARJEELING LOUNGE" where tea is also served among other items, which is not necessarily from Darjeeling. The Court took into consideration the cited case laws and also the provisions on 'rights conferred' and 'nature of infringement' of Trademarks and Certification marks to compare them and opined that infringement of the right conferred under Section 28 of the TM Act cannot have any application while alleging infringement of the rights conferred under Section 78 of the TM Act.

Under the Trade Marks Act 1999, Sections 28 & 29 deals with Rights conferred by registration and Infringement of registered Trademarks respectively and Sections 75 and 78 deals with Infringement of Certification trademarks and Rights conferred by registration of Certification trademarks. The Court particularly deliberated upon the infringement by use of a registered trademark by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered [sec 29 (5)] only to observe that a corresponding provision is absent in sec 75 and hence the application of sec 29 against rights conferred under sec 75 is unfounded.

The Court, on the allegation of passing off, held that the plaint does not makes any prima facie case as Tea Board is neither a trader of tea nor it is in the service of rendering hospitality therefore it is not its case that ITC, by naming one of its lounge as Darjeeling Lounge, is trying to proclaim as an agent or authorized representative of Tea Board. In the GI domain, the Court upheld the observation of the S.J that GI Act which seeks to protect indications identified on account of quality or reputation or other characteristics attributable to their geographical origin with respect to goods only (tea), cannot be extended to any right over a geographical name (Darjeeling) as that may fall foul of the objects of the G.I Act. Also the Court found it apparent that ITC in using the word DARJEELING does not falsely assert that it has right to certify that the tea served in the lounge is grown in Darjeeling.

The Court concluded the Tea Board's prima facie failure in proving violation of its registered certification trademark in terms of sec 75 of the TM Act as it had not registered its name as holder of the mark DARJEELING in respect of hotel business but for the purpose of certification of tea as one grown in Darjeeling where benefit of Sections 28 and 29 of the TM Act is not available.

The suit filed by Tea Board is pending before the High Court of Calcutta. Interestingly Intellectual Property Appellate Board (IPAB) is also set to hear this dispute after condoning delay in filing appeal by ITC. Tea Board had opposed the trademark application of ITC to register "Darjeeling Lounge" under class 42, which was held by the Deputy Registrar as abandoned due to non-compliance by ITC with the timeline as provided under the statute to file counterstatement to the opposition.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions