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C.S. No. 250 of 2010
The Plaintiff is Tea Board of India which is a state agency of the Government of India established to promote the cultivation, processing, and domestic trade as well as export of tea from India
The Defendant is ITC Ltd. a multinational conglomerate company headquartered at Kolkata, West Bengal.
The Tea Board of India filed a suit for trademark infringement against ITC Ltd. for using the name “Darjeeling” at one of its refreshment lounges, namely, “Darjeeling Lounge” at its Hotel in Kolkata.
The Plaintiff filed a suit in the Calcutta High Court which was rejected by the Single Judge. The Division Bench of the Court also upheld the decision. On appeal to the Supreme Court, the Court directed the suit to return to the Calcutta High Court with an instruction for expeditious decision on pleadings and admitted material only. Hence, the present appeal lies before the Calcutta High Court.
Has the plaintiff in lieu of its
trademark registration acquired any right other than the authority to certify
tea that originates from registered tea gardens in Darjeeling to use the name
or logo “Darjeeling”?
By using the name “Darjeeling” does the defendant falsely suggest that goods/services sold and catered to, owe their origin to Darjeeling or creates an impression that it operates under a license from the plaintiff?
Is the “Darjeeling” logo protectable under Copyright Act as claimed by the plaintiff?
- Section 2(c) of the Trade and Merchandise Marks Act, 1958
- Section 159(2) of the Trademark Act, 1999
- Section 69(c) of the Trademark Act, 1999
- Section 75 of the Trademark Act, 1999
- Section 78 of the Trademark Act, 1999
- Section 26(4) of the Geographical Indications Act
The Court pointed out the fact that the plaintiff has not obtained a registration under Sections 18 and 23 of the Trademark Act, 1999. The registration was done under Chapter VIII of the Trade and Merchandise Marks Act, 1958.
It looked into the definition of “certification trademark” under the 1999 Act and the 1958 Act and held that in lieu of Section 159(2) of the 1999 Act, the protection granted to the certification mark in question will only extend to goods and not services. Although the 1999 Act extends protection of certification mark to services as well, the Court was of the opinion that 159(c) only provides a continuing effect and not an extension of the protection already granted under the old Act.
The Court also looked into the plaintiff’s own showing of the copy of the entry in the register of trademarks and held that it was apparent from the registry that the certification trademark of the plaintiff was only applicable in respect of goods and not services.
The court pointed out that the right acquired by certification trademarks are limited as compared to regular trademarks and infringement of certification marks are covered under Section 75 unlike Section 29 which covers regular trademarks. In light of these observations the Court stated that the only right that has been granted to the plaintiff through the registration of trademark is to certify tea as “Darjeeling Tea”. No right with respect to any service or in respect of the word “Darjeeling” has been granted to the plaintiff.
The Court agreed with the contention of the defendant and held that the action of the plaintiff with respect to violations of the Geographical Indications Act is barred under Section 26(4) of the GI Act. The Court stated that it was apparent on the face of the records that the presentation of the plaint was made beyond the expiry of the 5 years period mandated by Section 26(4) of the Act.
According to the Court, there was
no substance in the allegations of passing
off. The Court said that the plaintiff was not able to substantiate its allegations by way of leading cogent
evidences either documentary or
Similarly, the Court stated that the plaintiff failed to substantiate its argument and prove that there was a dilution of either the registered Trademark or the Geographical Indication. Also, the Court could not find any substance in the argument of the plaintiff that the adoption, use and attempted registration of the trademark “Darjeeling Lounge” by the defendant was done in bad faith.
The Court also pointed out to the fact that the parties were engaged in different industries and there was no competition between the two. Hence, the court ruled out the possibility of any unfair competition on the part of the defendant. It also reiterated the defendant’s case that only high-end guests accessed the lounge. These guests were generally educated and knowledgeable and thus, they were not likely to be confused or mislead by the use of it. Therefore, it was adjudged by the Court that there was no dishonesty or any fraudulent act committed on the part of the defendant.
With respect to the issue of copyright infringement as claimed by the plaintiff, the Court pointed out that there is no similarity between the certification trademark logo and the logo of the defendant. Thus the court held this issue to be irrelevant and redundant.
The court concluded by saying that the suit was frivolous and dismissed it with a cost of Rs. One Lakh.
Author: Tarun Khurana (Partner and Patent Attorney), Abhishek Pandurangi (Partner and Patent Attorney) and Niharika Sanadhya, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at email@example.com.