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2011 Supreme(Cal) 1157
High Court of Judicature at Calcutta
BHASKAR BHATTACHARYA & SAMBUDDHA CHAKRABARTI
Tea Board, India
Versus
I.T.C. Limited
G.A. No.1631 of 2011 A.P.O.T. No.245 of 2011 C.S. No.250 of 2010
Decided On : 24-08-2011
For the Appellant:Mr. S.K. Kapoor, Mr. Ranjan Bachawat, Mr. Vipul Kundalia, Mrs. Rajashree Kundalia, Mr. Ravi Kapoor, Mr. Pithiraj Sinha, Ms. Sonal Shah, Mr. Kushagra Shah, Advocates.
For the Respondent:Mr. Anindya Kr. Mitra, Mr. Abhrajit Mitra, Mr. sarbopriya Mukherjee, Mr. Soumya Sen, Mr. Shaunak Mitra, Ms. Debamitra Adhikari, Ms. Siddique Parveen, Advocates.
A plaintiff seeking an interlocutory injunction must establish a prima facie case to succeed.
Headnote:
TRADEMARK - DARJEELING - GEOGRAPHICAL INDICATION - SUIT FOR INJUNCTION - INTERLOCUTORY INJUNCTION - PASSING OFF - REGISTRATION OF CERTIFICATION TRADEMARK - TRADEMARKS ACT, 1999 - GEOGRAPHICAL INDICATIONS OF GOODS (REGISTRATION AND PROTECTION) ACT, 1999 - The plaintiff, a statutory body created under the Tea Act, 1953, filed a suit for permanent injunction to restrain the defendant from using or conducting or marketing in any manner or in any way carrying on its business at the hotel situated in Kolkata by using in any manner whatsoever the name “DARJEELING LOUNGE” or any other name or mark or word which is phonetically or structurally similar or identical or deceptively similar to the registered geographical indications “DARJEELING”, the name and logo in the name of the plaintiff in any manner whatsoever and/or passing off or attempting to pass off its business or services so as to discredit the fame of DARJEELING tea as a geographical indication and/or to mislead persons as to the nature of the beverages sold at the said premises of the defendant so as to allude a nexus with the registered geographical indications for the name DARJEELING or logo and to confuse persons in any manner. The plaintiff contended that it had obtained registration of its name for the word mark ‘DARJEELING (DEVICE OF WOMEN)’ under the goods and description “tea” and such registration had been made under Chapter IX relating to Certification Trade Marks under the Trademarks Act, 1999. It further contended that it had the right of certification in India and other jurisdiction governing the use of the geographical indication “DARJEELING”, by its LOGO which guarantees that the tea sold under the same is produced in the defined region and district of Darjeeling and meets the criteria laid down by the plaintiff. The defendant contended that by virtue of the registration of the plaintiff under the Act or the G.I. Act in respect of DARGEELING in connection with Tea, no right had accrued in its favour in restraining the defendant from naming one of its lounges in the hotel as DARJEELING LOUNGE. The defendant further contended that the registration given in favour of the plaintiff was in respect of Certification Trade Marks and thus, there was no scope of alleging infringements under Sections 28-29 of the Act and consequently, no right accrued in favour of the plaintiff also in complaining the alleged violation of passing off as the plaintiff is neither trading with any goods nor is carrying on any business in the name of Darjeeling. The court held that the plaintiff had failed to prove a prima facie case to have an order of injunction. The court further held that the plaintiff failed to prove a prima facie case to go for trial and as such, this Court should not interfere with the discretion exercised by the learned Single Judge in favour of the defendant. The appeal was dismissed.
Fact of the Case:
The plaintiff, a statutory body created under the Tea Act, 1953, filed a suit for permanent injunction to restrain the defendant from using or conducting or marketing in any manner or in any way carrying on its business at the hotel situated in Kolkata by using in any manner whatsoever the name “DARJEELING LOUNGE” or any other name or mark or word which is phonetically or structurally similar or identical or deceptively similar to the registered geographical indications “DARJEELING”, the name and logo in the name of the plaintiff in any manner whatsoever and/or passing off or attempting to pass off its business or services so as to discredit the fame of DARJEELING tea as a geographical indication and/or to mislead persons as to the nature of the beverages sold at the said premises of the defendant so as to allude a nexus with the registered geographical indications for the name DARJEELING or logo and to confuse persons in any manner. The defendant contended that by virtue of the registration of the plaintiff under the Act or the G.I. Act in respect of DARGEELING in connection with Tea, no right had accrued in its favour in restraining the defendant from naming one of its lounges in the hotel as DARJEELING LOUNGE. The defendant further contended that the registration given in favour of the plaintiff was in respect of Certification Trade Marks and thus, there was no scope of alleging infringements under Sections 28-29 of the Act and consequently, no right accrued in favour of the plaintiff also in complaining the alleged violation of passing off as the plaintiff is neither trading with any goods nor is carrying on any business in the name of Darjeeling.
Finding of the Court:
The court held that the plaintiff had failed to prove a prima facie case to have an order of injunction. The court further held that the plaintiff failed to prove a prima facie case to go for trial and as such, this Court should not interfere with the discretion exercised by the learned Single Judge in favour of the defendant. The appeal was dismissed.
Issues: Whether the plaintiff had established a prima facie case for the grant of an interlocutory injunction?
Ratio Decidendi: The court held that the plaintiff had failed to prove a prima facie case to have an order of injunction. The court further held that the plaintiff failed to prove a prima facie case to go for trial and as such, this Court should not interfere with the discretion exercised by the learned Single Judge in favour of the defendant. The appeal was dismissed.
Final Decision: The appeal was dismissed.
Bhaskar Bhattacharya, J.
This appeal is at the instance of a plaintiff in a suit for permanent injunction and is directed against order dated April 20, 2011 passed by a learned Single Judge of this Court by which His Lordship rejected an application for interlocutory injunction in such a suit by which the plaintiff prayed for restraining the defendant from using or conducting or marketing in any manner or in any way carrying on its business at the hotel situated in Kolkata by using in any manner whatsoever the name “DARJEELING LOUNGE” or any other name or mark or word which is phonetically or structurally similar or identical or deceptively similar to the registered geographical indications “DARJEELING”, the name and logo in the name of the plaintiff in any manner whatsoever and/or passing off or attempting to pass off its business or services so as to discredit the fame of DARJEELING tea as a geographical indication and/or to mislead persons as to the nature of the beverages sold at the said premises of the defendant so as to allude a nexus with the registered geographical indications for the name DARJEELING or logo and to confuse persons in any manner. Being dissatisfied, the unsuccessful plaintiff has come up with the present appeal. The case made out by the plaintiff in the plaint may be summed up thus:
1) The plaintiff is an autonomous, non-profit making statutory body created under the Tea Act, 1953 and a part of the Ministry of Commerce and Industry, Government of India and was established by the Government of India in the year, 1953 for the purpose of controlling the Indian Tea Industry. The Constitution of the plaintiff is varied and its members include members of the Indian Parliament, owners of tea estates, growers of tea, the Government of the principal tea growing State of India, employees of tea estates and gardens, exporters and internal traders of tea, tea manufacturers and tea consumers.
2) Objects of the plaintiffs are, inter alia, to regulate the production, cultivation, marketing, sale and export of tea, encourage research, and other numerous statutory duties and functions under the Tea Act.
3) In order to preserve the integrity of tea sold under the name DARJEELING, the plaintiff has developed a distinctive DARJEELING logo which consists of the image of a woman holding two tea leaves and a bud in a roundel with the name DARJEELING prominently displayed along the top of the logo as indicated in the plaint.
4) On October 9, 1986 the plaintiff duly applied to be registered as the proprietor of the DARJEELING logo, while on December 10, 1998 the plaintiff duly applied to be registered as the proprietor of the name DARJEELING both as certification trade marks under Chapter IX of the Trade and Merchandise Marks Act, 1958 and the same were duly registered under the said Act in class 30 in the name of the plaintiff as the owner thereof. With the enactment of the new Trade Marks Act, 1999 (“Act”) these registrations continued under the new Act.
5) By virtue of these registrations, the plaintiff has the sole authority to certify that any tea marked by the said name DARJEELING or logo is guaranteed to be 100% DARJEELING tea originating from the 87 tea gardens in the Darjeeling District of West Bengal and possesses certain organoleptic qualities and characteristics. The certification trademark registrations of the DARJEELING name and logo have been duly renewed from time to time.
6) The Geographical Indications of Goods (Registration and Protection) Act, 1999 (“G.I. Act”) was promulgated in order, inter alia, to comply with India’s international obligations under the TRIPS Agreement to provide legal means for the protection of geographical indications and with the further object that under Article 24.9 of the TRIPS Agreement, the geographical indications from India may not be refused protection in other member countries of the WTO on the ground of lack of protection at home.
7) The name DARJEELING and th
