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2019 Supreme(Cal) 234
IN THE HIGH COURT OF CALCUTTA
Sahidullah Munshi, J.
Tea Board, India - Appellant
Vs.
Itc Limited - Respondent
Civil Suit No. 250 of 2010
Decided On : 04-02-2019
Vipul Kundalia, Adv., Sonal Agarwal, Adv., Anindya Kumar Mitra, Adv., Sarvapriyo Mukherjee, Adv., Paritosh Sinha, Adv., Mitul Dasgupta, Adv., Kiranjit Mazumder, Adv., Soumya Sen, Adv., Joydeep Roy, Adv., Arijit Dey, Adv.
The use of a geographical indication for services does not infringe a certification trademark that is limited to goods.
Headnote:
TRADE MARKS ACT, 1999 - SECTION 2(1)(C) - GEOGRAPHICAL INDICATIONS OF GOODS (REGISTRATION AND PROTECTION) ACT, 1999 - SECTION 26(4) - LIMITATION ACT, 1963 - SECTION 22 - CERTIFICATION TRADEMARK - INFRINGEMENT - PASSING OFF - UNFAIR COMPETITION - DILUTION - GEOGRAPHICAL INDICATION - BAR OF LIMITATION - MAINTAINABILITY OF SUIT - APPLICABILITY OF GEOGRAPHICAL INDICATION ACT TO SERVICES - REGISTRATION OF TRADEMARK - RIGHTS CONFERRED BY CERTIFICATION TRADEMARK - USE OF NAME 'DARJEELING' BY HOTEL FOR ITS LOUNGE - WHETHER INFRINGES CERTIFICATION TRADEMARK OR GEOGRAPHICAL INDICATION - WHETHER AMOUNTS TO PASSING OFF OR UNFAIR COMPETITION - WHETHER DILUTES GEOGRAPHICAL INDICATION - WHETHER SUIT BARRED BY LIMITATION - WHETHER MAINTAINABLE.
Fact of the Case:
Plaintiff, Tea Board of India, filed a suit against the defendant, ITC Limited, alleging infringement of its certification trademark 'DARJEELING' and geographical indication 'Darjeeling' by the defendant's use of the name 'DARJEELING LOUNGE' for its refreshment lounge in a five-star hotel in Kolkata. The plaintiff claimed that the defendant's use of the name 'DARJEELING LOUNGE' misled the public into believing that the goods and services offered at the lounge originated from Darjeeling, and that this amounted to passing off, unfair competition, and dilution of the plaintiff's registered geographical indication. The defendant denied the allegations and contended that the suit was barred by limitation under Section 26(4) of the Geographical Indications of Goods (Registration and Protection) Act, 1999.
Finding of the Court:
The Court held that the plaintiff's suit was barred by limitation under Section 26(4) of the Geographical Indications of Goods (Registration and Protection) Act, 1999, as the suit was filed more than five years after the defendant's use of the name 'DARJEELING LOUNGE' became known to the plaintiff. The Court also held that the plaintiff's certification trademark was limited to goods and did not extend to services, and therefore, the defendant's use of the name 'DARJEELING LOUNGE' for its lounge services did not infringe the plaintiff's certification trademark. The Court further held that the plaintiff had failed to prove that the defendant's use of the name 'DARJEELING LOUNGE' amounted to passing off, unfair competition, or dilution of the plaintiff's registered geographical indication. Accordingly, the Court dismissed the plaintiff's suit.
Issues: 1. Whether the suit is barred by limitation under Section 26(4) of the Geographical Indications of Goods (Registration and Protection) Act, 1999? 2. Whether the plaintiff's certification trademark extends to services? 3. Whether the defendant's use of the name 'DARJEELING LOUNGE' for its lounge services infringes the plaintiff's certification trademark? 4. Whether the defendant's use of the name 'DARJEELING LOUNGE' amounts to passing off? 5. Whether the defendant's use of the name 'DARJEELING LOUNGE' amounts to unfair competition? 6. Whether the defendant's use of the name 'DARJEELING LOUNGE' dilutes the plaintiff's registered geographical indication?
Ratio Decidendi: 1. Section 26(4) of the Geographical Indications of Goods (Registration and Protection) Act, 1999 bars any action in connection with the use or registration of a trademark after the expiry of 5 years from the date on which such use or registration infringes any geographical indication registered under the Act has become known to the registered proprietor or authorized user registered in respect of such geographical indication under the Act. 2. A certification trademark is limited to goods and does not extend to services.
Final Decision: The Court dismissed the plaintiff's suit.
Sahidullah Munshi, J.
The Court : This is a suit, inter alia, for the following reliefs made by the plaintiff in the plaint
i. "Leave under clause 14 of the Letters patent;
ii. A perpetual injunction restraining the defendant, by itself, or by its directors, or officers, or servants, or agents or employees or assigns as well as all those acting in concert with it or on its behalf or claiming under or through it or otherwise however from using or conducting or marketing in any manner or in any way carrying on its business at the said hotel by using in any manner whatsoever the impugned 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" name and logo in the name of the plaintiff in any manner or for any purpose whatsoever;
iii. Perpetual injunction restraining the defendant, by itself, or by its directors, or officers, or servants, or agents, or employees or assigns as well as all those acting in concert with it or on its behalf or claiming under or through it or otherwise howsoever from in any manner, committing any acts of unfair competition including passing off or attempting to pass off or causing, enabling or assisting others to pass off its business and 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's being rung under the impugned mark and/or so as to allude a nexus with the registered geographical indications for the name DARJEELING or logo and confuse persons in any manner or under any circumstances whatsoever.
iv. Perpetual injunction restraining the defendant, by itself, or by its directors, or officers, or servants, or agents, or employees or assigns as well as all those acting in concert with it or on its behalf or claiming under or through it or otherwise howsoever from in any manner, passing off or attempting to pass of or causing, enabling or assisting others to pass off its business and services as if the same have any nexus with the Darjeeling tea trade or Darjeeling tea being the certification trade marks registered in the name of the plaintiff in any manner or under any circumstances whatsoever;
v. Perpetual injunction restraining the defendant, by itself, or by its directors, or officers, or servants, or agents, or employees or assigns as well as all those acting in concert with it or on its behalf or claiming under or through it or otherwise howsoever from in any manner, from vending or selling its business or goods or services at its said hotel under any name which is phonetically or structurally similar or identical or deceptively similar to the registered certification trade marks "DARJEELING" name and logo in the name of the plaintiff for any purpose or in any manner whatsoever;
vi. A perpetual injunction restraining the defendant, by itself, or by its directors, or officers, or servants, or agents, or employees or assigns as well as all those acting in concert with it or on its behalf or claiming under or through it or otherwise howsoever from in any manner, from indulging in any activity which dilutes the distinctive character of the certification trade marks for the Darjeeling name and logo in the name of the plaintiff in any manner whatsoever;
vii. An order for deliver up for destruction upon oath of all products including signboards, menu cards, napkins, cutlery, stationery, brochures, promotional materials, letter heads, cash memos or any other items of whatsoever description and nature, bearing the impugned name and/or any other name or marks which may be phonetically or structurally similar or identical or deceptively similar to the said registered marks "DARJEELING" name and logo of the plaintiff;
viii. In addition to the injunction hereinbefore prayed for a decree for damages in sum of Rs. 50 crores for such amou
