Tea Board, India v. ITC Limited

Relevant Acts and provisions

Geographical Indications of Goods (Registration and Protection) Act, 1999

Section 26(4)

Provisions considered: Section 26(4) of the Geographical Indications of Goods (Registration and Protection) Act, 1999, and certification trade mark rights.

Brief facts

The Tea Board, registered proprietor of the certification trade mark and geographical indication for Darjeeling tea, sued ITC Limited alleging that ITC's use of the name of that region as the name of an exclusive lounge at its Kolkata hotel infringed the certification mark and geographical indication and amounted to passing off. ITC had opened the lounge in January 2005; the Tea Board did not file suit until October 2010, over five years after it claimed to have learnt of the lounge. ITC contested both the delay and the scope of the Tea Board's rights.

Issues before the Court

1. Was the suit barred by the five-year limitation in Section 26(4) of the Geographical Indications Act?
2. Does a certification trade mark for goods extend to use of the word for services?
3. Did the lounge's name infringe or pass off the Tea Board's mark?

Court's findings

The Court held that the suit was barred by limitation under Section 26(4) of the Geographical Indications of Goods (Registration and Protection) Act, 1999, since the Tea Board admitted knowledge of the lounge from around January 2005 but filed suit only in October 2010, well beyond the five-year period the Act prescribes.

The Court held that the certification trade mark registered in favour of the Tea Board covered only tea as a good and certified that tea bearing the mark originated from the region; it conferred no right over the geographical name as such, and none extending to services such as hospitality or the name of a hotel lounge. It observed that the lounge served no tea-related purpose and that an ordinary customer would not associate it with the Tea Board or with the tea.

The Court further noted the absence of evidence of actual confusion, dilution or bad faith, and found that the parties operated in entirely different trades, weakening any case for passing off.

Subsequent history: An appeal against this judgment was admitted by a Division Bench of the Calcutta High Court in 2019; the final outcome of that appeal could not be verified.

Decision

Suit dismissed as barred by limitation and on the merits; no injunction granted and costs awarded against the Tea Board.

Keywords

Certification Trade Mark Dilution Geographical Indication Limitation Passing Off