AREA: Geographical Indication
FACTS:
The Tea Board of India filed a suit against ITC Ltd. for using the name “Darjeeling” at one of its refreshment lounges at its Hotel, Calcutta which leads to infringement of the plaintiff’s geographical indication mark, and certification mark. The plaintiff is the registered owner of trademark “Darjeeling.” The marks are independently registered under the Geographical Indication of Goods (Registration & protection Act) 1999 and the Trade Marks Act, 1999. ITC introduced the term ‘Darjeeling Lounge’ in January 2003. Later in April 2005, the Tea Board became aware about the ITC’s trademark application for ‘Darjeeling lounge. After exchange of certain notices, the plaintiff filed a suit in 2010 before the Court requesting temporary injunction against the alleged defendant. According to the plaintiff, defendant has infringed the registered geographical indication rights by naming one of its business premises as ‘DARJEELING LOUNGE.
ISSUES:
Whether the plaintiff has acquired any right to use the logo or name “Darjeeling” other than the authority to certify the tea that originates from Darjeeling?
Whether the defendant used the name Darjeeling Lounge with Malafide intention to make believe its customers that they owe their origin to Darjeeling?
Whether the plaintiff can protect logo “Darjeeling” under Copyright?
ANALYSIS:
According to the plaintiff, the defendant has a malice intention used the word Darjeeling for the sale of products, misleads its customers made them trust that the goods are originated from the specific area of source.
The cause of publicity and promoting of products has created an unfair competition within the market.
The defendant with the aid of using the impugned name ‘DARJEELING’ has threatened the business exercises of the people groups who are absolutely occupied with the Darjeeling Tea.
The plaintiff had moved an interlocutory application for temporary injunction to restrain the defendant from infringing the rights in any viable manner.
According to Defendant, there is no reason for filing the suit as it 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 using the ‘DARJEELING LOUNGE’ in view with the Trademark Act.
Infringement of certification trade mark is confined only to Section 75 and that too, such infringement is confined to the goods, and services for which the certification trade mark is registered.
The court observed that, there has been no infringement under the Geographical Indications of Goods Act because the defendant’s ‘Lounge’ is not relating to goods. It has been used for their hotel services therefore it could not be constituted as infringement of the Geographical Infringement.
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.
JUDGMENT:
The court held that the action of the plaintiff with respect to the violations of the Geographical Indications Act is banned under Section 26(4) of the GI Act. No action in connection with the use or registration of a trade mark shall be taken after the expiry of five years from the date on which such use or registration infringes any geographical indication registered under this Act has become known to the registered proprietor or authorised user registered. The Court additionally brought up that the parties were engaged in different industries, and there was no competition between the two. The court concluded by saying that the suit was frivolous and dismissed it with an expense of one Lakh.
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