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What is GI?
A Geographical Indication (GI) is defined in the TRIPS Agreement. The mark of GI acts as an indicator which identifies a good as which originates in the territory of a Member country, or a regional locality in that territory, which has a quality, reputation or other characteristic of the good because of it its geographical origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production.
Rights of a GI Holder
A Geographical Indication right enables the GI tag holder to use the indication to prevents its use by a third party whose product does not stand upon the given standards. For example, in India the Darjeeling tea geographical indication is protected, and the GI right holders of Darjeeling tea can exclude use of the term “Darjeeling” for tea not grown in their tea gardens or not produced according to the given standards of the geographical indication.
However, a protected Geographical Indication does not enable the holder to prevent someone from making a product using the same techniques and having the same human intervention into the product as those set out in the standards for that indication. Protection for a geographical indication is usually obtained by acquiring a right over the sign that constitutes the indication.
Case Study: Tea Board of India Vs. ITC Ltd.
Arguments given by the plaintiff
According to the plaintiff, defendant has infringed the registered geographical indication rights having a fraud and malice intention and the rights of the plaintiff are being hampered in this way –
a) The defendant has fraudulently used the tag of Geographical Indication (GI) in naming one of its business premises as ‘DARJEELING LOUNGE’ which is a registered GI.
b) The defendant having malice intention used the name ‘DARJEELING’ for the presentation and sale of goods which it sells in such lounge.
c) The defendant has disguised its customers by suggesting that the goods which it sells at the said ‘DARJEELING LOUNGE’originate in the said geographical area.
d) The defendant by using the registered GI has hampered the rights of the plaintiff as the defendant misleads its customers by telling them that the products are originated from the designated place of origin.
e) The use of the name ‘DARJEELING’ for the purpose of the said lounge and for the purpose of publicity and selling of goods has created an unfair competition and the plaintiff can use his right of passing off and other rights for the matter.
f) The defendant’s use of the name ‘DARJEELING’ for naming the lounge, advertising and selling products against the honest trade practices.
g) The defendant, by using the impugned name ‘DARJEELING’ for the purpose of the lounge has threated the commercial activities of the persons who are actually in the business of the Darjeeling Tea.
h) The use of the name ‘DARJEELING’ for the purposes of its lounge and all purposes relating thereto is a serious threat to the trade of the existing tea business and also disregard to the registered GI tag having a particular standard.
i) The wrongful acts of the defendant in using the ‘DARJEELING’ name and logo is a highly misleading to the general public as regards the nature or manufacturing process or characteristics and suitability of the goods actually sold in the said lounge.
In order to prevent the Defendant from violating the above rights of the GI tag holder in reference with the Trademark Act and Geographical Indications, the plaintiff had moved an interlocutory application for temporary injunction to restrain the defendant from infringing the rights in any manner possible.
Arguments by the Defendant
According to the defendant, there is no cause of action for filing the suit as the suit was barred by limitation. Since the plaintiff had only certification trademark, no right or cause of action could arise for the plaintiff under such certification trademark against the defendant’s using the “DARJEELING LOUNGE” in view with the Trademark Act. As per the Defendant the suit is also not maintainable under section 26 of the Geographical Indications Act.
The Hon’ble Justice Sahidullah Munshi of Calcutta High Court, opined that the suit by Tea Board was barred by limitation as the hotel lounge was started in January 2003. But the suit was filed only in 2010 which is beyond the limitation provided under Section 26(4) of the GI act which is for 5 years.
The Court went into the merits of the case and Justice Munshi observed that, “It is also not found that there has been any infringement under the Geographical Indications of Goods Act because the defendant’s ‘Lounge’ is not relating to goods. Plaintiff’s rights conferred by the registration of the word ‘Darjeeling’ is only in relation to tea. ‘Darjeeling’ is not a trade mark. It is only used to indicate geographical indication of a place of origin of tea originating from Darjeeling. The law relates to geographical indication is confined only to goods. The plaintiff does not own any right in the name of ‘Darjeeling’ for any goods other than tea.The Geographical Indications Act can only extend to goods and admittedly, the defendant’s lounge does not fall within the category of ‘goods’”.
The Hon’ble Court further found that there is no unfair competition under the definitions of Geographical Indications Act as the business area of plaintiff and defendant is totally different and among the 87 tea estates none of them had raised any issue. The Board also claimed that its rights under Trademarks Act 1999 also stood violated by the use of name ‘Darjeeling’ for the lounge. But the Court noted that the Board only had certification trademark within the meaning of Section 2(e) of the Trademarks Act 1999, which does not amount to a registered trademark. The certification trademark gave the Board only the authority to certify that the concerned tea is connected with Darjeeling region and here the defendant is dealing with service.
The Court stated that there is no relation between the defendants ‘DARJEELING LOUNGE’ and the plaintiff’s rights under Trademark or GI act and the allegations are baseless and the Court dismissed the suit for Rs.10 lakhs.
From the above case we can conclude that a registered GI gives right to the GI tag holder to stop any person or entity from using the registered mark of GI or its name in a product which might be similar or deceptively similar to the registered product or it might not be similar to the registered product, but have the registered name in it. But if a person is using the registered name or logo of GI in a service then that will not come under the ambit of The Geographical Indications of Goods (Registration and Protection) Act, 1999 because if we look at the definition of GI itself given in the TRIPS and in the section 2(e) of the domestic GI act then we will find the use of word “good/s” in it and the word service is mentioned no where and GI is about the product with special characteristics because of environment, climate and human intervention of a specific region. So, on this merits court dismissed the appeal by the plaintiff.
Author: Rohan Dalbehera, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at email@example.com.