The Tea Board of India has lost its appeal before the Calcutta High Court to injunct the Indian conglomerate ITC Limited, and its hospitality/hotel chain, from using the word “Darjeeling” in connection with its tea lounge. In its order dated 24 August 2011, a Division Bench of the Calcutta High Court emphatically upheld the earlier decision of the Single Judge (which we reported on here and here), saying that the injunction had been refused on “well-established principles”, and that the Board had failed to make out a prima facie case even. The order is available here.
Backstory: For those of who arrive a little after the tea has been brewed, a brief history of the facts: “Darjeeling” and the logo of a woman holding tea leaves are registered by The Tea Board as geographical indications GIs as well as certification trademarks, under the respective Acts, in connection with “tea”. The Tea Board sued the ITC Sonar, a leading Kolkata hotel, for naming its executive lounge, “Darjeeling Lounge”.
The suit hinged mainly on issues of infringement of the GI and the certification TMs, as well as for passing off and dilution. In April this year, a Single Judge of the Calcutta High Court had refused to grant an injunction to the Tea Board. The Tea Board then came in appeal to the Division Bench (DB), which refused to reverse the order of the trial court. Mr S Majumdar of S Majumdar & Co, a Kolkata-based IP law firm, brought the DB decision to our attention.
On a side note, the word “Darjeeling” and the corresponding logo are the first two GIs registered in India, numbered 1 and 2, in class 30. One would think it is entirely appropriate that the first decision involving GIs in India should be in connection with these two registrations!
The appellate (DB) order: The DB said that the Tea Board had failed to make out a prima facie case of passing off. The court noted that the Tea Board was admittedly neither a trader of tea nor was it in the hospitality industry. The Tea Board was in fact a statutory authority which had obtained certification marks in order to protect its “authority to certify” that a particular type of tea was connected with the Darjeeling region. The Tea Board did not contend that ITC Sonar’s Darjeeling Lounge was trying to hijack this authority to certify in any way, and therefore had no case for passing off.
The Tea Board had alleged that the beverages sold and served in the Darjeeling Lounge had no connection whatsoever with the Darjeeling GI or the Darjeeling region itself (the tea-producing hill region in the eastern Indian state of West Bengal, soon to be [*groan*] renamed Paschim Banga). As a result, according to the Tea Board, the intention of the hotel to convey a nexus to that effect was ‘false and fraudulent’. The Board also alleged that the serving of a wide range of beverages (other than Darjeeling teas) at the Darjeeling Lounge was “an act of unfair competition inasmuch as it discredits the famous Darjeeling tea and misleads the [hotel’s] patrons as to the nature of the beverages served there”.
The DB also drew attention to the rights of owners of registered certification marks (section 78 and 75, Trade Marks Act) as being different from the owners of registered trademarks (section 28 and 29). “Darjeeling” is registered as a certification mark.
I thought that the Division Bench offered a very sound judgement (some of you may well disagree with me on this). But I believe this is a good precedent to have set in terms of establishing what may not be claimed as an infringement of a certification mark or a geographical indication. This is also a great opportunity for registered owners, such as the Tea Board, to better understand the boundaries of their rights, and enforce and strategise accordingly.