Use of DARJEELING mark for lingerie allowed by Supreme Court

In Tea Board India v Delta Lingerie SA of Cachan, the Israel Supreme Court has upheld the decision of the registrar of trademarks to reject the Indian Tea Board's opposition against Delta Lingerie SA of Cachan's application for the trademark DARJEELING for lingerie products and shops for such products.

Delta, a French company, is a subsidiary of Groupe Chantelle and is a manufacturer of lingerie products. Delta and Groupe Chantelle have been using the trademark DARJEELING for lingerie products and shops for such products since 1995. The DARJEELING products are sold in Israel through an exclusive distributor.

The Indian Tea Board is a statutory body that was set up by virtue of the Indian Tea Act 1953 in order to preserve the goodwill of Indian tea around the world. The Tea Board is responsible, among other things, for Darjeeling tea, which grows in the Darjeeling district in the State of West Bengal in India. The Tea Board registered the mark DARJEELING as word and logo marks in many countries in the world, but not in Israel.

The Tea Board's opposition to Delta's application for DARJEELING was principally based on the following grounds:

• the Tea Board's mark is a famous and well-known mark and Delta's mark was likely to cause confusion and encourage unfair competition in relation thereto;
  
  
• Delta's mark would dilute the goodwill associated with the Tea Board's mark; and
  
  
• the ordinary significance of Delta's mark is geographical.

The Supreme Court first examined the question of confusion. The court held that the Tea Board had not shown that there was a likelihood of confusion between Delta's mark and its mark. The court ruled that there was no doubt that the marks in question were identical. Nevertheless, the great difference between lingerie and tea prevented any likelihood of confusion. It further stated that even if the Tea Board's mark were a well-known trademark, the public's familiarity with the mark would be restricted to the field of tea and would not spill over to the field of lingerie.

Regarding the Tea Board's claim with respect to dilution, the court observed that Section 11(6) of the Trademarks Ordinance (New Version) 1972, which refers to the term 'unfair competition', has been used to 'import' the doctrine of dilution into Israeli law. The court stated that in order to claim likelihood of dilution successfully, the following cumulative criteria must be shown:

• the business in question is a cross-border business;
  
  
• the mark in question possesses strength which extends beyond the product for which the mark is used;
  
  
• the competing use of the mark stems from an intention to exploit the goodwill of the well-known mark; and
  
  
• the level of behaviour required for unfair competition is set according to proper social standards.

The court held that the Tea Board had not fulfilled these criteria. The registrar had earlier ruled that the Tea Board's mark is well known for the relevant public (ie, purchasers and drinkers of tea). However, the court stated that, in order to establish dilution, it has to be shown that the strength of the Tea Board's DARJEELING mark extends beyond tea products. In passing, the court further observed in this regard that although, as a matter of principle, an appellate court should not normally interfere with factual findings, the registrar's finding that the Tea Board's mark is well known for the relevant public was not founded.

It should be noted that the court did not rule on the relationship between the dilution doctrine under Section 11(6) and the 1999 amendments to the Trademarks Ordinance dealing with the protection of well-known marks within the framework of the Agreement on Trade-Related Aspects of Intellectual Property Rights, set out in Sections 11(13) and 11(14). It has been argued that these amendments have rendered the dilution doctrine under Section 11(6) superfluous.

In its analysis, the court commented that, in other jurisdictions including the United States, the marks of both parties coexist. In addition, the court observed that because the Tea Board is not a manufacturer, it could not be said to have an intention to expand use of the DARJEELING mark to areas other than tea. The court further expressed its agreement with the registrar's ruling that Delta had chosen its mark in good faith, without an intention to exploit the goodwill of the Darjeeling district or the Darjeeling tea manufacturers.

Regarding the Tea Board's claim that the ordinary significance of Delta's mark was geographical, Section 11(11) of the Trademarks Ordinance provides that a mark is not eligible for registration if, among other things, its "ordinary significance is geographical … unless represented in a special manner or unless having a distinctive character". The court upheld the registrar's ruling on this point, namely, that if there is no descriptive connection between a geographical mark and the goods for which it is used, proof of distinctive character by means of secondary meaning is not required.

The court thus rejected the Tea Board's appeal and awarded costs to Delta.

For background discussion of this case, see Tea Board fails to prevent registration of DARJEELING for clothing.

Neil Wilkof and Anat Paz, Herzog Fox & Neeman, Tel Aviv