2011 (4) TMI 1554 - HC - Indian Laws

Summary

Issues Involved:
1. Infringement of Geographical Indication Mark
2. Passing-Off
3. Dilution of Brand
4. Applicability of Geographical Indications (GI) Act to Services
5. Certification Trade Marks and Cross-Category Complaints
6. Acquiescence and Delay under Section 26(4) of the GI Act

Issue-Wise Detailed Analysis:

1. Infringement of Geographical Indication Mark:
The Plaintiff, a statutory body under the Tea Act, 1953, holds registered geographical indication and certification marks for "Darjeeling." The Plaintiff claims that the Defendant's use of "Darjeeling" in naming a section of its hotel as "Darjeeling Lounge" constitutes infringement. The Defendant counters by asserting that the GI Act is confined to goods and does not extend to services. The court notes that Section 22 of the GI Act deals with infringement concerning goods, not services, thus the Plaintiff's claim under this provision is not tenable.

2. Passing-Off:
The Plaintiff argues that the use of "Darjeeling" by the Defendant amounts to passing-off. The court examines Section 20(2) of the GI Act, which recognizes passing-off but limits it to goods. The court finds that the Defendant's lounge, being an exclusive area within its hotel accessible only to high-end customers, does not create a likelihood of deception or confusion. Therefore, the claim of passing-off is not upheld.

3. Dilution of Brand:
The Plaintiff asserts that the use of "Darjeeling" by the Defendant dilutes the brand. The court acknowledges the extensive use of "Darjeeling" in trading and commercial circles long before the GI Act was enacted. Given the widespread use of the term, the court concludes that the Plaintiff's recent registration does not entitle it to the exclusivity it asserts, and thus, the claim of dilution is not supported.

4. Applicability of Geographical Indications (GI) Act to Services:
The Defendant argues that the GI Act protects only goods and not services. The court agrees, noting that the preamble and various sections of the GI Act emphasize goods. Therefore, the Plaintiff cannot extend its rights under the GI Act to services.

5. Certification Trade Marks and Cross-Category Complaints:
The Plaintiff also asserts rights under certification trade marks. The court distinguishes between geographical indications and certification trade marks, noting that the latter can apply to both goods and services. However, the court finds that the Defendant's use of "Darjeeling" does not infringe the Plaintiff's certification trade mark rights because the lounge is not a service that misleads consumers regarding the origin or quality of goods.

6. Acquiescence and Delay under Section 26(4) of the GI Act:
The Defendant invokes Section 26(4) of the GI Act, arguing that the Plaintiff's claim is barred due to delay. The Plaintiff contends that it has a continuing cause of action and that the Defendant's use of "Darjeeling" is in bad faith, which should be assessed on evidence. The court does not find sufficient grounds to consider the Plaintiff's claim as barred by acquiescence or delay.

Conclusion:
The court dismisses the Plaintiff's application, finding no merit in the claims of infringement, passing-off, or dilution. The court emphasizes that the GI Act is confined to goods and does not extend to services, and the Plaintiff's recent registration does not confer the exclusivity claimed. The Defendant's use of "Darjeeling" in the name of its lounge does not mislead consumers or dilute the brand. The application is dismissed without any order as to costs.