9911796707
TMI Blog2011 (4) TMI 1554X X X X Extracts X X X X X X X X Extracts X X X X ..... ry body set up under the Tea Act, 1953. The Plaintiff 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... any combination of them conveying or suggesting the geographical origin of the goods to which it applies. Section 2(1)(e) of the GI Act is of the very essence of 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 fro ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n authorized user thereof,- (a) uses such geographical indication by any means in the designations or presentation of goods that indicates or suggests that such goods originate in a geographical 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... or authorized user and such geographical indication is not used or registered in bad faith. 10. The four other chapters of the GI Act cover rectification and correction of the register; appeals to the appellate board; offences and penalties; 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... such manner as to render the use of the mark likely to be taken as being a use as a trade mark. 12. One needs must address the fundamental point of principle raised by the Defendant: that the rights of the Plaintiff in respect of its registered marks are only to protect goods and cannot be extended 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 relati ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... none is apposite in the context. The Plaintiff has relied on a judgment reported at AIR 1968 Cal 582 (Imperial Tobacco Co. of India Ltd v. Registrar of Trade Marks) for the proposition that long before the GI Act, Section 9 of the Trade Marks Act, 1958 prohibited the registration of a trade mark with a geographical name. 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 5, the Plaintiff filed its opposition to the Defendant's application for registration. In September, 2005 the Defendant replied to the Plaintiff's letter of June, 2005 and refused to discontinue the name of its lounge. The Plaintiff claims that following its opposition, the Defendant abandoned its application for registration. In February, 2006 and May, 2008 the Plaintiff issued two 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nfair trade practice," though it seems to have been borrowed from the TRIPS agreement and not uniquely coined. If every kind of passing-off amounted to unfair competition, Section 20(2) of the GI Act would be otiose. 20. Passing-off as in Section 20(2) of the GI Act has to be seen in the light of what it implies in trade mark law. As to whether any goods or services are passed off as some other goods or services would depend on a variety of factors ranging from the nature of the marks, their resemblance, the nature of the goods and services, the similarity 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 associa ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
