Geographical Indication Rights Applicable Only To Goods And Not Services, Holds Calcutta HC Dismissing Tea Board's Suit Against ITC
Tea Board complained that use of name 'Darjeeling' for a hotel lounge of ITC violated GI rights of Darjeeling tea.
The rights of Geographical Indication(GI) can be enforced only in respect of goods and not services, held the Calcutta High Court, while dismissing an infringement suit by Tea Board against Indian Tobacco Company(ITC).
The Board claimed that the use of name 'Darjeeling' for the lounge of Sonar, a five star hotel run by ITC in Kolkata, will amount to infringement of Gegoraphical Indication rights of Darjeeling tea held by the Board under the Geographical Indication of Goods Act,1999.
At the outset, the Justice Sahidullah Munshi, found that the suit by Tea Board was barred by limitation. The hotel lounge was started in January 2003. But the suit was filed only in 2010, beyond the period of five years specified as limitation period under Section 26(4) of the GI Act.
Nevertheless, the Court went on to answer the issue on merits as well. It held that GI Act was not attracted in the case, as the impugned use of name was not in relation to any goods.
""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'", observed Justice Munshi.
It further found that there was no competition between the plaintiff and defendant in any industrial or commercial matters and therefore, the question of unfair competition within the meaning of Geographical Indication Act did not arise at all.
The judge approved the submission of ITC that Darjeeling Tea was produced in 87 Tea Estates within the district of Darjeeling, but none of them had any complaint against defendant using the name "Darjeeling Lounge".
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.
"Tea Board, therefore, under the provisions of the law, cannot exercise their authority with a limited interest of certification trademark to verify the services rendered by the defendant in their lounge named 'DARJEELING LOUNGE', observed the court.
The Court went on to state:
"How the defendant's 'DARJEELING LOUNGE' can be equated with the plaintiff's certification trade mark and/or geographical indication 'Darjeeling' is not at all understood.The allegation of the plaintiff is as if word 'Darjeeling' cannot be used by any other concerned which is absolutely baseless and there is no reasonable foundation of such submission"
The suit was dismissed with costs of Rs.10 lakhs.