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May 11

Newsletter May 2011

Concept & Editing by: Dr. Niti Dewan

Tea anyone? Darjeeling?

The Calcutta High Court recently decided a case involving infringement of Geographical Indication. This is the first case of GI infringement instituted in India. The Tea Board, India, owns the Geographical Indication of Darjeeling Tea logo and also a certification mark.

The Tea board sued ITC Limited for use of the word Darjeeling as part of the name of ITC’s exclusive lounge the “Darjeeling Lounge”.

The Tea Board claimed that the use of “Darjeeling” in the name of the ITC’s exclusive lounge amounts to infringement of the Tea Board’s “Darjeeling Tea” geographical indication mark and certification mark; that, it amounts to passing-off; and, that it leads to dilution of the “Darjeeling” brand which exclusively belongs to the Tea Board.

The Hon’ble High Court however digressed and in its eloquent decision stated:

“The word “Darjeeling” – as precious to tea as it may be as champagne to sparkling wines of that province in France – cannot be exclusively claimed by the plaintiff by virtue of its registration as a geographical indication or as a certification trade mark. 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. It is not necessary to consider whether a “Darjeeling Tea Stall” selling only hot cups of tea can entitle the plaintiff to carry a complaint in respect thereof or a “Darjeeling Tea House” selling all varieties of packaged tea can be said to be in derogation of the plaintiff’s rights. The defendant’s “Darjeeling Lounge” is an exclusive area within the confines of its hotel which is accessible only to its high-end customers. The lounge is a place where such customers and accompanying visitors may frequent, and even sip Darjeeling tea or any other beverage or drink, but there is scarcely any likelihood of deception or confusion in the lounge being named “Darjeeling” for the plaintiff to be granted to any order that it seeks.

As to the case of dilution, the name “Darjeeling” has been extensively used in trading and commercial circles for decades before the GI Act was enacted. In a case of dilution by blurring, it is the uniqueness of a mark which is protected even in a case where there is no likelihood of confusion. But the word “Darjeeling” has been and continues to be so widely used as a business name or for like purpose for so long that the plaintiff’s recent registration would, prima facie, not entitle it to enjoy the kind of exclusivity that it asserts.”

For the full Judgment click here.

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