Tea Board of India Vs Itc Limited: Intellectual Property Rights

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Intellectual property rights

TEA BOARD OF INDIA VS ITC LIMITED


Submitted to lovely professional university
In the proper fulfillment of requirements for the award of the degree of Bachelors of Arts

Course Code: LAW314

CLASS: B.A LLB

SECTION: L1701

Roll no.:A20

SUBMITTED TO: SUBMITTED BY:

Ms kajal Choudhary Priya garg

(11718820)

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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

DATE OF JUDGMENT:Aug-24-2011

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Acknowledgement

Working on the case of Tea Board of India vs. ITC Limited was a very knowledgeable
experience. The documentation has actually helped me in enrichment my knowledge on the case
and the subject. The case along with relevant sections and case laws was discussed at deep
lengths in the class which helped me in making this project.
I feel highly privileged to work under the guidance of Mam and sincerely acknowledge her
efforts in directly and indirectly contributing of this piece of work.

Thank you Mam!

#Ms Kajal Choudhary

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Index

S.no Particulars Pg.no


1 Introduction 5
2 Facts 6
3 Issue 7
4 Sections 7
5 Arguments by plantiff 8-9
6 Arguments by defendant 9
7 Judgemnent 10
8 Conclusion 11
9 Personal opinion 11

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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 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.

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Facts of the case:

• The Tea Board of India holds the famous GI “Darjeeling” and the logo of a woman holding tea
leaves, as well as the certification trade mark “Darjeeling” under the Trade Marks Act, in
connection with “tea”.

• ITC, Limited used “Darjeeling Lounge” as the name for its executive lounge at its Kolkata hotel,
the ITC Sonar.

• 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 matter was rejected by the one judge bench, due to which an appeal was made before the
Division bench of the Kolkata high court.

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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?

Sections/Acts Referred:
• Section 75 of the Trademarks Act:Infringement of certification trademarks.
• Section 78 of the Trademarks Act: Rights conferred by registration of certification trademarks.
• Section 29 of the Trademarks Act:Infringement of registered trademarks.
• Section 68 of the Trade Marks Act:Additional grounds for removal of registration of collective
mark

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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

➢ 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.

➢ 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 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.
➢ 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 GI tag having a particular standard.
➢ 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.

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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.

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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 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.

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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 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.

Personal opinion

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 like 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.”

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