By way of an update on the “Darjeeling” Geographical Indications (GI) case we reported on some days ago, we have uploaded a copy of the decision on our site. This is a very interesting decision, not just because it is the first ever 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. We bring you a detailed report on the decision below. (Image from here)Cross-category rights – Goods vs Services
ITC argued that the Tea Board could only exercise its rights in re registered marks only to protect goods and not services. In the case of certification trademarks, it was fairly straightforward. GIs have a trickier path to navigate, but the court noted that despite the GI Act’s focus on goods, cross-category complaints could be actionable under Section 22(1)(b) (which deals with unfair competition) and Section 20(2) (which deal with passing off) of the Act.
Suit time-barred?: use of mark known since 2005
ITC tried to attack the suit on grounds of limitation and section 26(4) of the GI Act, arguing that the Tea Board was aware of “Darjeeling Lounge” in 2005, and only sued in 2010. The Tea Board, however, had been actively targetting the ITC’s use by way of letters, and oppositions before the Trademark Registry, and there could be no acquiescence imputed.
Set theory: Passing Off vs Unfair CompetitionWhich is a sub-set of which, appears to be the question here — The judge, in his interpretation of S. 22(1)(b), which deals with the use of a GI in a manner which would constitute an act of unfair competition including passing-off, held as follows:
“The expression “unfair competition including passing off” would not, by reason of the explanations in the relevant sub-section, imply that every kind of passing-off would amount to unfair competition. The expression has to be understood to mean that certain kinds of passing-off, not all, would amount to unfair competition as defined. The phrase used is “unfair competition” and not “unfair practice” or “unfair trade practice,” though it seems to have been borrowed from the TRIPS agreement and not uniquely coined. If every kind of passing-off amounted to unfair competition, Section 20(2) of the GI Act would be otiose.”
I’m a little confused here myself, for a reading of the section suggests passing off is a type of unfair competition; whereas a reading of the decision suggests that unfair competition is a type of passing off. What do you think?
Darjeeling not exclusive to Tea Board
The decision was categorical in stating that the word “Darjeeling” could not be exclusively claimed by the Tea Board despite its GI and TM registrations. Crucially, the court held, “Even for a case of passing-off, the use of “Darjeeling” by a person other than the plaintiff can be complained of if the word or the geographical indication has any nexus with the product with which it is exclusively associated upon the registration.”
This raises an obvious interesting but unanswered question: what defines “nexus” as referred to by the Judge above? What degree of similarity will convince a judge to offer a different decision on passing off?
By way of comparison, for instance, a decision by a Parisian court, in favour of the Tea Board, in a case involving stationery, and certain services. Another page has collated decisions of interest relating to Darjeeling Tea here.
Hi,
I think u r right. a reading of the decision, in all probability, suggests that unfair competition is a type of passing off.
Further I think that the judgment could have dealt more w.r.t its observation where it says that passing-off in GI has to be seen in the light of its implication in trade mark law…
I don’t think that the decision is conveying that passing off is a kind of unfair competition. A reading of the last line which says ‘if every kind of passing off amounted to unfair competition, then S.20(2) would be otiose’ implies that not every kind of passing of is unfair competition which is essentially what the Act is saying.
If only, someone could decipher what the Judge meant as regards passing-off and unfair competition…