GEOGRAPHICAL INDICATION VS. TRADEMARK

12th September, 2011 - 1:06 pm Categories: Trademark Litigation 0 Comments

As the title suggests, this article will ride you through interesting judgment given by Division Bench of Kolkata High Court recently in Tea Board, India vs. I.T.C. Limited upholding emphatically the earlier decision of the Single Judge. This is a very interesting decision, not just because it is the upholding of first ever decision given by an Indian court on the infringement of a registered GI; but also because it may have significant implications on the protection of GI rights in the country in the times to come.

Brief Facts – The Tea Board is the registered proprietor of the GI “Darjeeling” and the logo of a woman holding tea leaves, as well as the certification trade mark “Darjeeling” under the Trade Marks Act, in connection with “tea”. They sued the Indian conglomerate ITC for using “Darjeeling Lounge” as the name for its executive lounge at its Kolkata hotel, the ITC Sonar. The suit revolves mainly on issues of infringement of the GI and the certification TMs, as well as for passing off and dilution. The Single Judge of the Kolkata Court had refused to grant an interlocutory injunction to the Tea Board hence the appeal.

(The word “Darjeeling” and the corresponding logo are the first two GIs registered in India; it is surprising that the first decision involving GIs in India is in connection with these two registrations)

Issues –

1. Whether by virtue of certification trade mark, the plaintiff can restrain the defendant for infringement and passing off, who is carrying a business of hospitality from naming one of its lounges in the hotel as “DARJEELING LOUNGE”, where among the beverages and foods served to its customers, tea is also one of the items which is not necessarily restricted to the one grown only in the district of Darjeeling?

The division bench held that Section 68 of Trade Marks Act which deals with certification trademarks specifically exclude application of Section 29 i.e. infringement of registered trademarks. Therefore, protection conferred under Section 29 of the Act is not available to the plaintiff being holder of a Certification Trade Mark. But by virtue of registered certifications, the holder thereof is entitled to protect its right conferred under Section 78 of the Act as provided in Section 75 of the said Act. Court went on to discuss Sections 28 and 29 for the purpose of comparing of nature of rights accrued and the infringement mentioned therein with those provided in Sections 75 and 78 of the Act.

Section 78 states that, the registration of a person as a proprietor of certification trade mark in respect of any goods or services shall if valid, give to that person the exclusive right to the use of the mark in relation to those goods or services. Section 75 states that the right conferred by section 78 is infringed by any person who, not being the registered proprietor of the certification trade mark or a person authorized by him, uses in the course of trade, a mark, which is identical with or deceptively similar to the certification trade mark in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken as being a use as a trade mark.

Whereas 28 states that subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of trade mark in the manner provided by this Act. Here the expression “to obtain relief in respect of infringement of trade mark in the manner provided by this Act.” which is conspicuously absent in Section 78 of the Act.

Moreover, in Section 29, the list of infringements of the rights conferred under Section 28 is far more extensive as detailed in nine different sub-sections including the act of use without permission 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 as provided in sub-section (5) thereof, which is the allegation against the defendant by the plaintiff in substance. The above phrase indicated in Section 29 is noticeably absent in Section 75 of the Act. Therefore, there is no infringement of certification trademark in this case.

Appellant also relied on some foreign decisions showing that in foreign courts Tea Board has succeeded to prevent some foreign traders who are using the word “Darjeeling” in their trade name from so doing. Court rejected those decisions by saying that those decisions, those foreign courts had no occasion to deal with the provisions contained in the Trademarks Act or the G.I. Act of this country. Since we are not finally deciding the matter but are dealing with an appeal preferred against an order of interlocutory injunction where the main matter is yet to be decided on merit, we are concerned with the existence of a prima facie case of the plaintiff based on the abovementioned two Indian Statutes and as such, we do not intend to deal with those foreign decisions based on the law prevailing in those countries at this stage.

Court also rejected the contention of plaintiff regarding passing off by saying the plaintiff is neither a trader of tea nor is it in the service of rendering hospitality to the public. The Tea Board is created by a statute who has obtained registration of its Certification Trademarks for protecting its authority to certify that a particular type of tea is connected with the Darjeeling region to protect its interest. It is not the case of the plaintiff that the defendant is trying to pose before the public that it has also the authority of such certification or that it has proclaimed by naming one of its lounges in a hotel as that of DARJEELING LOUNGE that it is the authority to give such certificate or that it is an agent or authorized representative of the plaintiff. Thus, the averments made in the plaint do not make out any prima facie case of passing off.

    2. Whether the use of word “DARGILING” by the defendant for naming one of its lounges in the hotel as  “DARJEELING  LOUNGE” is violative of the rights conferred by the Geographical Indication Act?

To answer this issue court went on to specify the statements of the object and reason of enacting the G.I  Act and said that based on the object and the preamble of the said Act, it has described as an Act to provide for the registration and better protection of geographical indications relating to goods. Court opined that  in the context of the G. I. Act, the learned Single Judge was right in prima facie holding that the right conferred on registration under the G.I Act in respect of the goods “tea”, does not confer any right over the word “Darjeeling”, a geographical name, so as to prevent the defendant from rendering its services of hospitality to the public by naming one of the lounges of its hotel as “Darjeeling Lounge” as the object of the G. I. Act is to give better protection of geographical indications relating to goods.

Conclusion –

This decision treats GI’s very differently from statutorily protected “Well Known Marks”, as later being entitled to stronger protection when it comes to dilution. Also, there is important thing to note that the rights conferred on owners of registered certification marks (Sec. 75 & 78) are different and weaker from the rights conferred on owners of the registered trademarks (Sec. 28 & 29). I think this is a good judgment as the bench has not got carried away by foreign judgments and decided the matter on provisions prevailed in Indian Statutes. This judgment specifies what should not be claimed against the rights conferred by certified marks & GI’s.

About the Author: Mr. Vinayak Aher, Trade Mark Attorney in Khurana & Khurana and can be reached: Vinayak@khuranaandkhurana.com.