In a decision likely to have interesting ramifications on the Geographical Indications (GI) marketplace in India, the Calcutta High Court today held that the word “Darjeeling” is not the exclusive right of the Tea Board, deciding in favour of the Kolkata hotel ITC Sonar and its Darjeeling Lounge. (Image from here.)
GIs versus trademarks
The decision is yet to be made available online, and we shall give you a detailed report on it as and when. Meanwhile, Mr S Majumdar, of S Majumdar & Co., Kolkata, who was handling the case, and whom we’d like to thank for providing us valuable information on this, informs SpicyIP that this decision makes some relevant distinctions in comparing the laws dealing with GIs and trademarks.
In particular, he points out that the decision treats GIs differently from statutorily protected “well-known trademarks”, the latter being entitled to stronger protection when it comes to issues of dilution.
“Unfair competition can be tackled through the GI law to the extent that the accused product/services would amount to misrepresentation and would eventually lead to passing off. The dilution component in GI would practically have no application unless directly related to the goods for which the GI is protected. Thus the GI proprietors should be realistic in enforcing the GIs,” he says.
Quick facts
For those of you who do not have the patience to wait for the judgement, here’s a quick overview of the case, so far as we know it:– The Tea Board is the registered proprietor of the GI “Darjeeling” and the logo of a woman holding tea leaves under the GI Act, 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 appears to have covered several grounds, including infringement of the GI and the certification trademark, as well as for passing off and dilution.
The Tea Board attempted to argue that the use of “Darjeeling” in connection with any goods or services (not necessarily tea) would be violative of their rights. The defence appears to have successfully countered that, in view of the court’s limited interpretation of dilution in the context of GIs – limited only to the goods a GI is registered in, and not to the whole gamut of goods and services otherwise protected under GI and trademarks law.
There are some other interesting issues that have been raised in the case, including around prior use (ITC Sonar was using “Darjeeling Lounge” in 2003, whereas the GI Act came into force only in 2005). However, we will be better positioned to discuss this when we lay our hands on the judgement, which we understand is to be uploaded sometime tomorrow.
Indian GIs: at home in the world?
By way of a parting shot, I wonder how ironic it is that the Indian Tea Board should have lost a dilution case on home turf, while succeeding in other jurisdictions, notably in France, as this 2007 news item from the Hindu suggests.
This decision also makes it all the more urgent for the GI community to regroup and assess with more clarity as to how the post-registration and enforcement mechanism in the GI system is to work in the times to come.
When and where can i get a copy of the judgment?
In response to the ‘ironic’ paragraph, it may be stated that the Tea Board lost in India because it chose to fight in a weak turf. The plaintiff, especially the GI holders, should be careful while filing their claims, and should ‘pick and choose’ the claims they wish to contest. Now this judgment would be a bad precedent against them if not appealed, but the appeal cannot give them direct relief, for ITC Sonar is well within their rights…