This article has been written by Malika Agarwal pursuing a Diploma in Corporate Law & Practice: Transactions, Governance and Disputes course from LawSikho.

This article has been edited and published by Shashwat Kaushik. 

Introduction

Certification trademarks and geographic indications play an important role in recognising and promoting local or regional products or industries that have unique characteristics arising from their source or place of origin. They also curb unfair trade practices or competition by preventing misuse and unauthorised use of renowned geographical names or signs as a badge of origin, thereby protecting the investment of producers in establishing a brand. However, an absolute monopoly over the use of registered indications and marks can also stifle competition and free trade. It is therefore important to delineate the scope and extent of rights conferred by registration. Several law judgements in India have aided in defining what uses of protected geographical names, signs, or terms may not amount to infringement, even when registered. This article seeks to examine such non-infringing uses in detail, based on the famous case law of Tea Board of India vs. ITC Limited (2010), also known as the Darjeeling tea case.

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What is a certification trademark

A certification mark is a type of trademark that is used to certify some characteristics of goods and services. In India, the certification marks are governed under Chapter VIII and Section 69 of the Trademarks Act of 1999. It indicates that the goods or services meet certain standards with respect to accuracy, material, geographical origin, quality, mode of manufacture, etc., as certified by the proprietor. 

As per Section 2(1)(e) of the Trademark Act, a certification mark is a mark for particular goods or services that distinguishes them in terms of their origin, quality, characteristics, material and mode of manufacture from those that are not certified. The proprietor has the exclusive right to certify goods or services and authorise others to use them to indicate conformity to the standards.

Usage of a certified trademark

Section 28 of the Trademarks Act of 1999 grants the owner exclusive rights to use the registered trademark for their products or services. This implies that the others cannot use an identical or deceptively similar trademark for similar goods or services. The owner can also take legal action against anyone who tries to use their trademark without permission. Essentially, Section 28 safeguards the trademark owner’s brand identity and prevents others from accruing benefits from their reputation or confusing customers with similar marks.

Section 30 prohibits the use of a certification mark without authorisation from the registered proprietor. It states that no person other than the registered proprietor shall use the certification mark in a manner that is likely to cause confusion. However, if someone uses the certification mark without getting authorisation in relation to goods or services that do not meet the standards set by their proprietor, it amounts to infringement under Section 29 of the Act. For instance, in the case of Khoday Distilleries Ltd. & Ors. vs. Scotch Whisky Association & Ors., Khoday Distilleries Ltd. (2008) used the term “Peter Scot” for its whisky, and it sought to register this trademark. However, the Scotch Whisky Association, representing Scotch whisky producers, opposed the registration, contending that it would lead to confusion among consumers and dilute the distinctiveness of the term ‘Scotch whisky.’ The petitioner, however, by virtue of Section 28, asserted its right to use the “Peter Scot” trademark, emphasising that it had registered the mark and had exclusive rights to use it for its product. On the other hand, the Scotch Whisky Association invoked Section 29, which deals with trademark infringement, and contended that the use of a similar mark for similar goods could lead to consumer confusion. To claim that Khoday’s use of “Peter Scot” for its whisky was likely to cause confusion among consumers, as it resembled ‘Scotch whisky’ closely.

Ultimately, the court upheld the opposition by the Scotch Whisky Association, stating that the use of “Peter Scot” for Indian whisky could indeed lead to confusion and misrepresentation. This case illustrates how Sections 28 and 29 of the Trademarks Act of 1999 play a vital role in protecting the rights of trademark owners and preventing unauthorised use of marks that could create confusion in the marketplace.

What is a geographical indication

As per Section 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act of 1999, a geographical indication is understood as an indication that identifies goods as originating from a specific territory, region or locality, where a given quality, reputation or other characteristic of that good is attributable to its geographical origin. For instance, Darjeeling tea, Basmati rice, Kolhapuri chappal, etc.

GIs are important for several reasons:

  1. Protection of traditional knowledge: GIs protect traditional knowledge and prevent its unauthorised use by others. They recognise the unique cultural and traditional significance of products and prevent their misappropriation and exploitation.
  2. Quality assurance: GIs ensure the consistent quality of products by setting specific standards and specifications that must be met by producers within the designated region. This helps build trust among consumers and provides them with assurance that they are purchasing authentic and high-quality products.
  3. Promotion of regional development: GIs contribute to regional development by promoting economic growth and job creation within a specific geographical area. They encourage local producers, artisans, and farmers to preserve and enhance traditional production methods, which can lead to increased income and improved livelihoods for communities.
  4. Consumer information: GIs provide consumers with valuable information regarding the origin and characteristics of products. They help consumers make informed choices by conveying the unique qualities, cultural significance, and authenticity associated with the geographical location.
  5. Competitive advantage: GIs can provide a competitive edge to producers by differentiating their products in the market. Consumers are increasingly looking for products that are authentic, sustainable, and tied to a specific geographical origin. GIs help businesses capitalise on this trend and distinguish themselves from competitors.

Overall, geographical indications play a crucial role in protecting intellectual property, ensuring product quality, promoting regional development, providing consumer information, and offering a competitive advantage to producers. They are essential tools for safeguarding traditional knowledge and preserving the unique identities and cultural heritage of different regions around the world.

Infringement of geographical indication 

Infringement of GI (Geographical Indication) occurs when an unauthorised person uses the GI sign on goods that do not originate from a place indicated by the GI, even if the true origin of goods is indicated, or the GI is used in translation or is accompanied by words like type, kind, style, etc.  Section 29 of the Trademarks Act of 1999 deals with infringement of registered trademarks. It states that a registered trademark is infringed if an unauthorised party uses an identical or deceptively similar mark for similar goods or services in a way that causes confusion among the public. It also considers infringement if a famous trademark is used without authorization on dissimilar goods in a way that takes unfair advantage of the trademark’s reputation.

Key points to understand regarding GI infringement:

  • Unauthorised use: Infringement occurs when a person or entity uses a GI sign without the permission or authorization of the authorised user or proprietor of the GI. This includes using the GI sign on goods or services that do not originate from the geographical area associated with the GI.
  • Misrepresentation of origin: Infringement can also occur when the true origin of the goods is indicated alongside the unauthorised use of the GI sign. Even if the consumer is made aware of the actual place of origin, the use of the GI sign can still be considered deceptive and misleading.
  • Translation and accompanying words: The use of a GI sign in a translated form or accompanied by words such as “type,” “kind,” or “style” can also constitute infringement. This is because such practices can still create an association between the goods and the geographical area indicated by the GI, even if the exact GI sign is not used.

Analysis of the darjeeling tea case

Background facts of the case

The Tea Board of India (TBI) is a statutory body established under the Ministry of Commerce and Industry, Government of India, in 1954. It is the apex regulatory body for the Indian tea industry. Its role is to maintain quality standards for Indian tea and promote and develop the Indian tea industry both domestically and internationally. It also oversees the implementation of the Tea Act of 1953, which is Indian legislation enacted to regulate the tea industry in the country. It provides a legal framework for the cultivation, production, and marketing of tea, with the primary objective of ensuring the quality and standardisation of Indian tea. The Act mandates the registration of tea estates, factories, and warehouses, and it grants the Tea Board of India the authority to control various aspects of tea production and export.

The plaintiff, Tea Board of India, filed a case against the defendant, ITC Limited, seeking various reliefs, including a permanent injunction barring it from using the name “Darjeeling Lounge” for a lounge in its hotel in Kolkata. The plaintiff is the registered proprietor of the certification trademark ‘Darjeeling’, thereby claiming rights over the registered certification mark and geographic indication for ‘Darjeeling’ and ‘Darjeeling logo’. Thus, the legal issue that arose in this case was whether the use of the name “Darjeeling Lounge” in respect of the refreshment lounge services amounted to an act of infringement of the plaintiff’s rights under the Trademarks Act of 1999 and the Geographical Indication Act of 1999. It pertains to whether the plaintiff has obtained any rights beyond the authority to certify tea originating from Darjeeling. Another question that revolves around this is whether the defendant intentionally used the name “Darjeeling Lounge” with malicious intent to deceive customers into believing that their establishment originates from Darjeeling, thereby infringing the plaintiff’s rights. 

Issues involved in this case

There are two primary issues, inter alia, involved in this case, namely:

  • Whether the plaintiff’s certification mark, obtained under the previous Trade and Merchandise Marks Act of 1958, covers services like those offered by the defendant’s “Darjeeling Lounge.” It questions if the transition to the Trademark Act of 1999 extended the scope of the certification mark to services and whether the defendant’s actions amounted to infringement under the new Act.
  • The issue also pertains to whether the plaintiff’s rights related to the term “Darjeeling,” which was registered for “Tea,” also extend to services like the defendant’s “Darjeeling Lounge.”

Whether there has been an infringement under the Trademark Act of 1999

The plaintiff obtained the certification mark under Chapter VIII of the Trade and Merchandise Marks Act of 1958 (TMM) and not under Section 18 and Section 23 of the Trademark Act of 1999, thereby not attracting the provisions of Section 28 and Section 29, which deal with infringement. So the certification mark under the TMM Act was only confined to goods and did not include services. The TMM Act was repealed by the Trademark Act of 1999. In this regard, Section 159(2) of the Trademark Act of 1999 provides that the certification mark issued under the provisions of the TMM Act of 1958 will continue to remain in force. However, it does not mention that it is extended by the provisions of the Trademark Act of 1999, thereby clarifying that the certification mark is confined to only goods, which are ‘Tea’, not services. Therefore, the plaintiff cannot claim proprietary rights over the services rendered by the defendant in their lounge, Darjeeling Lounge. 

Moreover, the plaintiff’s right would have been infringed if the defendant certified its tea to be ‘Darjeeling tea’, which is not the case as the defendant did not certify nor intend to certify tea with the use of the lounge as ‘Darjeeling Lounge’. Infringement of a certification mark is confined to Section 75 of the Trademark Act of 1999, which is restricted to infringement of only those goods and services for which a certification mark is registered. It does not extend to other goods and services. Thus, a clear difference was drawn between Section 28 and Section 29, which apply to trademarks and Section 75, which is applicable to certification trademarks. This further makes it clear that there were no unfair trade practices on the part of the defendant and, therefore, no infringement under the Trademark Act of 1999. 

Whether there has been an infringement under the Geographical Indication of Goods Act of 1999

The geographical indication law is confined to goods originating from the defined geographical area. It does not apply to services. There was no infringement under the Act, as the allegation made by the plaintiff pertained to its right conferred by the registration of the word ‘Darjeeling’. But this word was only with respect to tea (a good). However, the defendant’s lounge was not related to goods but to services. Hence, Darjeeling per se is not a trademark but merely a GI tag indicating the place of origin of Darjeeling tea. So the use of a GI on services cannot amount to infringement.

In simple words, the GI Act only relates to goods originating from Darjeeling and not the good itself. The plaintiff does not have any rights over the use of ‘Darjeeling’ for goods other than tea. Since the defendant’s lounge does not fall within the category of goods, the GI Act does not apply. Moreover, the suit was filed after the limitation period of 5 years under Section 26(4) of the GI Act, thereby rendering the suit not maintainable. Therefore, there was no infringement under the Geographical Indication of Goods Act of 1999 as well.

Conclusion

In conclusion, the analysis of the Darjeeling case judgement provides useful insights into the narrow scope of infringement of certification marks and geographical indications under Indian law. The rights conferred by these intellectual property rights are limited in nature. Mere use of a certified name or geographical indication alone without using the registered certification mark is not infringement. The GI law applies only to goods, not services. Additionally, the use of a name that has become generic cannot be restricted. The judgement clarifies that infringement is specifically defined and that the scope should not be extended to other contexts. There has to be unauthorised use of the actual registered certification mark on certified goods/services to claim infringement. The 5 year limitation period for gaining knowledge of alleged infringing use also restricts the timeframe for raising claims. This case thus establishes appropriate boundaries regarding what acts do not amount to infringement of certification marks and GIs in India.

References

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