First court decision on infringement of registered GI

India
In Tea Board of India v ITC Limited (GA 3137 of 2010, CS 250 of 2010, April 20 2011), the Calcutta High Court has held that the Tea Board of India did not have exclusive rights in the word 'Darjeeling'.

Darjeeling, which has been world renowned for tea for many centuries, was put on the international map during the British rule. The Tea Board of India, realising the need to protect the Darjeeling designation, had, before the Indian Geographical Indications Act came into force, sought to register both the term 'Darjeeling Tea' and the following logo as certification marks under the Trademarks Act, along with the certifying regulations incorporated into the Tea Act 1953 in 2000:              

Certificates of origin are issued for export consignments under the Tea (Marketing and Distribution Control) Order 2000, read in conjunction with the Tea Act. Thus, a certificate of origin is akin to a geographical indication (GI).      
           
Subsequently, the Tea Board registered both 'Darjeeling Tea' and the logo as a GI.

ITC Limited, a diversified company engaged in the tobacco, hospitality, retail, consumer goods and garments sectors, has been operating the 'Darjeeling Lounge' since January 2003 in Shonar Bangla, one of its five-star hotels in Calcutta. Access to the lounge is restricted to guests staying in high-end rooms through the use of their room cards.

ITC had applied for the registration of 'Darjeeling Lounge' as a service mark as early as February 2004. The application was opposed by the Tea Board in July 2005, which resulted in a default judgment in favour of the Tea Board. An appeal was preferred on the grounds that the notice of opposition had not been duly served on ITC or its counsel. ITC refused to stop using 'Darjeeling Lounge', despite exchanging correspondence with the Tea Board.  
             
Five years after this initial correspondence and the Tea Board's opposition to ITC’s service mark application, the Tea Board approached the Calcutta High Court in late 2010, seeking to restrain ITC from further using the term 'Darjeeling Lounge'. The Tea Board alleged, among other things:
  • infringement of its registered GIs and certification marks;
  • passing off; and
  • dilution of the Darjeeling brand.
ITC submitted several strong defences. First, it argued that other facilities within the same hotel had been given geographical names, such as Sundarbans and Pala, to give the hotel a flavour of the state of West Bengal. Moreover, its use of the term 'Darjeeling Lounge' preceded the entry into force of the Geographical Indications Act on September 15 2003. Further, the protection granted to the Tea Board's registered GIs and certification marks was restricted to tea, and did not extend to unrelated services.

After hearing detailed arguments by both sides, the Calcutta High Court refused to grant an interim injunction, agreeing with ITC that there is more to Darjeeling than just tea, such as "its misty mornings, alluring snow caps in the distance and the innocence of its apple-cheeked children".

Given the subject matter of the dispute, it is likely that this decision will be appealed all the way to the Supreme Court. Arguably, it is high time that the courts establish certain principles with regard to GIs - for example: 
  • Would the registration of a geographical name as a GI or certification mark give blanket protection against all uses of the name?
  • Would all the principles relating to trademarks also apply to the protection of GIs?
The decision is significant in that it is the first time that this type of action has been filed by the proprietor of a GI due to its use by a third party in respect of services.

M S Bharath, Anand and Anand, Chennai

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