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INTELLECTUAL PROPERTY 138
LAW PROJECT
TEA BOARD OF INDIA VS ITC
LIMITED
 Intellectual property rights
TEA BOARD OF INDIA VS ITC LIMITED

Court: Kolkata High Court

Case- Tea board of India vs ITC limited

Judge -Bhaskar Bhattacharya; Sambuddha Chakrabarti, JJ

APPELLANT- Tea Board of India

RESPONDENT- ITC limited.

[Link] TOPICS [Link]

1 Introduction 2
2 Facts

3 Issues

4 Sections

5 Arguments by plaintiff

6 Arguments by defendant

7 Judgment

8 Conclusion

9 Personal opinion
What is GI?
A Geographical Indication 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 production1.

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.

Facts of the case:

1
Article 22.1, TRIPS Agreement
The Tea Board had previously filed a suit against ITC for using the word
Darjeeling for their lounge. The suit mainly revolved on issues of infringement
of the GI and the certification TMs, as well as for passing off and dilution.
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.
The wrongful acts of the defendant in using the 'DARJEELING' name and logo
are 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.
The matter was rejected by the one judge bench, due to which an appeal was made
before the Division bench of the Kolkata high court2.

Issues:
Whether by virtue of certification trade mark, the plaintiff can restrain the
defendant for infringement and passing off, who is carrying a business of
hospitality from naming one of its lounges in the hotel as
"DARJEELINGLOUNGE", where among the beverage s and foods served to its
customers, tea is also one of the items which is not necessarily restricted to the
one grown only in the district of Darjeeling?
Whether the use of word "DARGILING" by the defendant for naming one of its
lounges in the hotel as "DARJEELING LOUNGE" violates the rights conferred
by the Geographical Indication Act?

Arguments given by the plaintiff.

2
GA No. 3137 of 2010, CS No. 250 of 2010, High Court at Calcutta
The defendant has fraudulently used the tag of Geographical Indication in naming
one of its business premises as 'DARJEELING LOUNGE' which is a registered
Gl.
The defendant having malice intention used the name 'DARJEELING for the
presentation and sale of goods which it sells in such lounge.
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.
The defendant by using the registered Gl 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.
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.
The defendant's use of the name DARJEELING' for naming the lounge,
advertising and selling products against the honest trade practices.
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.
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 Gl tag having a particular standard.
The wrongful acts of the defendant in using the 'DARJEELING' name and logo
are a highly misleading to the 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 to 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.

Judgement.
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 Gl 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 trademark. 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 using 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 relates to 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 Gl act, and the allegations
are baseless, and the Court dismissed the suit for Rs. 10 lakhs.

Conclusion -
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 Gl 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 Gl
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 nowhere
and Gl 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.

Self- Appraisal-
It would have been acceptable if the respondent had been indulged in using the
name Darjeeling for a food product or maybe any other good which has been
registered under the same class as that of the Darjeeling Tea. My basic opinion is
that, having a fear of passing off is logical, but going to a certain limit of
preventing the use of a name to an extent where even a common man can
differentiate is simple and pure form of lunacy. I agree that counterfeit products
can be sold under this specific famous name. But neither was there a product
under name of the subject mark, nor was there the utilization of the symbol of the
subject mark. We understood that "protecting a mark is essential, but going
overboard with protection is being restlessly insecure."