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TMI Blog2011 (4) TMI 1554X X X X Extracts X X X X X X X X Extracts X X X X ..... intiff is the registered owner of the two sets of trade marks. The marks are word Darjeeling and a round device featuring the exquisite profile of a lady to the right holding the easily recognizable two-leaves-and-a-bud in her left hand and the word Darjeeling spelt out on the edge running from 9 o'clock to 12 o'clock. The word and device marks are independently registered under the Geographical Indication of Goods (Registration Protection) Act 1999 and the Trade Marks Act, 1999. 3. The Plaintiff's grievance here is in the Defendant naming a section of its luxurious ITC Sonar Hotel in the city as the Darjeeling Lounge. The Plaintiff has run its case at several levels: first claiming that the use of Darjeeling in the name of the exclusive lounge amounts to infringement of the Plaintiff's Darjeeling geographical indication mark and certification mark; that, at any rate, it amounts to passing-off; and, that it leads to dilution of the Darjeeling brand which is only the Plaintiff's to exploit. 4. The Defendant attempts to cut the Plaintiff's case at the very root. The Defendant says that before discrediting the claim on the basis of what can and does go on at th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f this statute: 2. Definitions and interpretation. - (1) In this Act, unless the context otherwise requires,- ... (e) geographical indication , in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be. Explanation.-For the purposes of this clause, any name which is not the name of country, region or locality of that country shall also be considered as the geographical indication if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be; 7. After the preliminary chapter of the GI Act that includes the title and definition sections, the second chapter deals w ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... cal area other than the true place of origin of such goods in a manner which misleads the persons as to the geographical origin of such goods; or (b) uses any geographical indication in such manner which constitutes an act of unfair competition including passing off in respect of registered geographical indication. Explanation 1. - For the purposes of this clause, act of unfair competition means any act of competition contrary to honest practices in industrial or commercial matters. Explanation 2. - For the removal of doubts, it is hereby clarified that the following acts shall be deemed to be acts of unfair competition, namely: (i) all acts of such a nature as to create confusion by any means whatsoever with the establishment, the goods or the industrial or commercial activities, of a competitor; (ii) false allegations in the course of trade of such a nature as to discredit the establishment, the goods or the industrial or commercial activities, of a competition; (iii) geographical indications, the use of which in the course of trade is liable to mislead the persons as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ties; and, miscellaneous provisions. These chapters have not been placed with any great emphasis by the parties though Section 37 thereof, which is the first section in Chapter VIII that deals with offences, penalties and procedures, may be of some interest as it stresses on goods in its every limb in spelling out the meaning of applying geographical indications. Such provision may be juxtaposed against the corresponding Section 101 under the Trade Marks Act that extends the deeming provision there under to both goods and services. 11. Apart from the Plaintiff's claim on the basis of its geographical indication, Darjeeling , the Plaintiff also asserts its rights as the owner of the certification marks that confer special rights under Chapter IX of the Trade Marks Act. Such stand-alone chapter of the Trade Marks Act has 10 Sections. Section 69 precludes the applicability of certain statutory provisions relating to general trade marks to certification trade marks. The next five sections deal with the registrability of certification trade marks, applications for such purpose, the considerations relevant for registration, the procedure for opposition to an application for registrat ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ended to any form of services. The first part of such contention is that in so far as the Plaintiff is the registered proprietor of a geographical indication and the GI Act is confined only to goods, the Plaintiff cannot have any cause of action against any service that may use the identical geographical indication. The second part of the submission on such score implies that if a certification mark is in respect of any goods, a complaint of infringement may be brought against any other goods or persons connected therewith; or if a certification trade mark is in respect of any services, a complaint may be brought against any other service or persons connected therewith: but a complaint may not be brought by the registered proprietor of a certification trade mark relating to goods against any service or persons connected therewith; and, the registered owner of a certification trade mark relating to any service may not complain against any infringing goods or persons connected therewith. The point raised as to the cross-category impermissibility of a complaint, in case of both a geographical indication and a certification trade mark, does not have to be conclusively answered at this ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e. The Plaintiff has also placed a judgment reported at (2008) 13 SCC 30 (Entertainment Network (India) Ltd. v. Super Cassette Industries Ltd.) for the applicability of international conventions in Indian law. In dealing with the Defendant's contention that the claim may be barred under Section 26(4) of the GI Act, the Plaintiff has relied on the judgments reported at (1994) 2 SCC 448 (Power Control Appliances v. Sumeet Machines (P) Ltd.) and AIR 1998 Cal 261 (Allergan Inc v. Milment Oftho Industries) to suggest that the acquiescence on the Plaintiff's part should have amounted to acceptance of the Defendant's use of Darjeeling in connection with its lounge for the bar under Section 26(4) of the GI Act to operate. The Plaintiff has also relied on a recent, yet unreported, decision of the Supreme Court rendered on March 3, 2011 in Civil Appeal Nos. 6314-15 of 2001 (T.V. Venugopal v. Ushodaya Enterprises Ltd.) for the submission recorded therein as to the dilution of a mark. The Plaintiff has placed McCarthy on Trademarks and Unfair Competition to emphasis on the dilution doctrine, particularly on dilution by blurring. As to the legal meaning of good faith , the Plaintiff ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... further letters to the Defendant complaining of impropriety on the Defendant's part in using Darjeeling as part of the name for its lounge. 17. The Defendant contends that its lounge is named Darjeeling to give its hotel in Calcutta a flavour of Bengal. It says that its banquet hall at the hotel is called Pala, another lounge is named Bay of Bengal and the lawn at its hotel is known as Sundarbans. The Plaintiff is quick to point out, however, that the various portions of the Defendant's hotel do not bear references exclusively to this state or its history or geography as a Dublin bar or Dumpukht and Peshawari restaurants thereat would not otherwise have figured. 18. The Defendant says that its Darjeeling Lounge has been functional from the inception of its hotel in January, 2003 and prior to the GI Act coming into force on September 15, 2003. The Defendant asserts that its lounge is restricted to the guests at its high-end rooms and it is not open to any one walking in to the hotel since it can be accessed only by the room-cards of a certain category of rooms. The Defendant serves beverages and drinks of all types at such lounge and says that there is no possibility of any ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ity of the character of the goods and services, the mode of accessing the goods or services and other surrounding circumstances. 21. 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 o ..... X X X X Extracts X X X X X X X X Extracts X X X X
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