TEA BOARD, INDIA Vs. ITC LIMITED
LAWS(CAL)-2019-2-1
HIGH COURT OF CALCUTTA
Decided on February 04,2019

Tea Board, India Appellant
VERSUS
ITC LIMITED Respondents

JUDGEMENT

SAHIDULLAH MUNSHI,J. - (1.) 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 amount as may be determined and found due and payable to the plaintiff upon appropriate enquiries; ix. Interim Injunction; x. Attachment; xi. Receiver; xii. For the purposes aforesaid all necessary accounts, enquiries, and directions; xiii. Costs; xiv. Further and other reliefs."
(2.) According to the plaintiff, defendant has fraudulently, disguisedly and illegally infringed the registered geographical indication rights and rights of the plaintiff in the manner as described in the plaint as also by further fraudulent acts of infringement, particulars whereof being that - a) The defendant has wrongfully used the geographical indications in the designation and/or naming of its business premises as 'DARJEELING LOUNGE'. b) The defendant has wrongfully used the name 'DARJEELING' for the presentation and sale of goods which it sells in such lounge. c) The defendant has wrongfully suggested that the goods which it sells at the said 'DARJEELING LOUNGE' originate in the said geographical area other than the true place of origin of such goods as are sold which are not originating in Darjeeling at all. d) The defendant has wrongfully used the geographical indications and other registered rights of the plaintiff in a manner to mislead and continues to mislead all persons frequenting or using the facilities at its said Darjeeling Lounge as regards the geographical origin of the goods which were sold thereat. e) The use of the name 'DARJEELING' for the purpose of the said lounge and for all purposes connected therewith including the publicity thereof and the selling of goods thereat had constituted acts of unfair competition and/or passing off in respect of the registered geographical indications rights and other registered rights of the plaintiff. f) The defendant's use of the name 'DARJEELING' in connection with the said lounge for all purposes relating thereto constituted acts which are completely contrary to honest commercial trade practice. g) The defendant, by using the impugned name 'DARJEELING' for the purposes of the said lounge, has so acted as to create confusion between the establishments and/or goods and/or commercial activities of all persons and parties who are actually concerned with the production and trade of Darjeeling tea grown thereat. h) The use of the name 'DARJEELING' for the purposes of its lounge and all purposes relating thereto is tantamount to the making of false allegations in the course of trade which false allegations are of such a nature as to discredit the registered geographical indications for the name 'DARJEELING' and logo. i) The wrongful acts of the defendant in using the 'DARJEELING' name and logo tantamount to misleading the public as regards the nature or manufacturing process or characteristics and suitability of the goods actually sold in the said lounge. In order to prevent the defendant from the aforesaid violations under Trademarks Act and/or Geographical Indication Act the plaintiff moved an interlocutory application for temporary injunction in this suit by which the plaintiff prayed for restraining the defendant from using or conducting or making in any manner or in any way carrying its business at the hotel situate 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 indication, "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 indication in the name of 'DARJEELING' or logo and to confuse persons in any manner. The application for temporary injunction was rejected by the Hon'ble Single Bench and an appeal was filed being A.P.O.T. No.245 of 2011. By a judgment and order dated 24th August, 2011, the Hon'ble Division Bench presided over by the Hon'ble Justice Bhaskar Bhattacharya, as His Lordship then was, dismissed the appeal holding, inter alia, that the Hon'ble Single Judge rightly refused the prayer for interim order and there was no reason to arrive at a different conclusion than what has been arrived at by the Hon'ble Single Judge. Challenging the said judgment and order passed by the Hon'ble Division Bench on 24th August, 2011, in A.P.O.T. No. 245 of 2011, a Special Leave Petition being Special Leave to Appeal (Civil) No.S32282 of 2011 was filed. When the said appeal was taken up for consideration by Their Lordships in the Hon'ble Apex Court, learned Counsel appearing for the plaintiff, on specific instruction by the authorities of the Tea Board of India, submitted that the plaintiff will not lead any oral or documentary evidence before the Court where the actual suit is pending. It was also stated before the Hon'ble Apex Court that the plaintiff would not dispute any averment made in the written statement or in the documents already filed before the Court by the respondent/defendant. Subsequently, another order was passed on 22nd January, 2016, wherein the Hon'ble Apex Court held- "The questions sought to be raised before this Court in respect of grant of interim relief which has been rejected by the High Court, may be urged before the High Court in the suit. The High Court is requested to hear and decide the suit as expeditiously as possible as its calendar permits. The parties may place before the High Court the order of this Court dated 6th March, 2013 and the High Court will take due notice of the same while fixing its calendar. With the aforesaid directions, the special leave petition is disposed of. We make it clear that we have not expressed any opinion on the merits of the case." In pursuance of the above direction issued by the Hon'ble Apex Court the suit was taken up for hearing and it was agreed by the parties that on the basis of the pleadings and the admitted documents the hearing of the suit will be concluded. In support of the contention raised in the plaint the plaintiff has annexed the following documents :- 1. Copy of Certificate of Registration of Certificate Marks bearing nos.83159 in class 30 and trademark No.532240 in class 30 in favour of the plaintiff. The said Certificate has been issued by the authority authorized under Section 3(2) of the Trademarks Act, 1999. 2. Copy of Certificate of Registrations of Geographical Indication in favour of the plaintiff. 3. Copy of Certificate of Registration of Copyright with respect to the Darjeeling Logo in favour of the plaintiff. 4. Copy of a list of domestic and overseas licensees registered with the plaintiff. 5. Copy of advertisement clipping from the Trademark Journal bearing the advertisement of Darjeeling Lounge. 6. Copy of photographs of Darjeeling Lounge. 7. Copy of letter dated 9th June, 2005 written by the attorney of the plaintiff and addressed to the defendant. 8. Copy of letter dated 7th September, 2005 written by the attorney of the defendant and addressed to the plaintiff's attorney. 9. Copy of letter dated 23rd February, 2006 written by the Chairman of the plaintiff and addressed to the defendant. 10. Copy of letter dated 30th May, 2008 written by the attorney of the plaintiff and addressed to the Chairman of the defendant. 11. Copy of letter dated 30th January, 2009 written by the attorney of the defendant and addressed to the plaintiff. 12. Copy of the Order of the Deputy Registrar of Trademarks dated 8th April, 2009. The genesis of the dispute between the plaintiff and the defendant was the use and attempted registration of the impugned mark "DARJEELING LOUNGE" by the defendant in respect of a refreshment lounge in the five-star hotel SONAR BANGLA in Kolkata. Plaintiff contended that the defendant has been using the said lounge to offer food items and all kinds of beverages, alcoholic and non- alcoholic including Darjeeling tea. The plaintiff has asserted that in April, 2005 it became aware of the defendant's impugned trademark application for "Darjeeling Lounge" being application no.1265886 in class 41 when the same was advertised in the Trademarks Journal. Aggrieved by the defendant's attempted registration and use of the impugned mark "DARJEELING LOUNGE" the plaintiff, through its Attorneys, addressed a letter dated January 9, 2005 to the defendant which is at page 108 of the plaint. Plaintiff pointed out that it has rights in the geographical indication and certification marks 'DARJEELING' and 'DARJEELING' logo and, therefore, it called upon the defendant to withdraw its trademark application. On July 13, 2005, the plaintiff was constrained to send a notice within the prescribed period under the provisions of the Trademarks Act, 1999 against the defendant's application no.1265886 in class 41. Objections and counter-objections continued in between the plaintiff and defendant and, ultimately, the present suit has been filed by the plaintiff on September 30, 2010. Defendant filed written statement disputing the plaint case. According to the defendant, there is no cause of action for filing the suit. The suit is barred by the law of limitation. There has been neither any violation of trademark, nor is there any passing off. Since the plaintiff had only certification trademark, no right or cause of action could arise for the plaintiff under such certification trademark against the defendant's using the "DARJEELING LOUNGE". The plaintiff has also no right to sue the defendant for the alleged cause of action under Geographical Indication Act, 1999 either. According to the defendant, suit is not maintainable in view of Section 26 of the Geographical Indication Act, 1999 and particularly that the word 'DARJEELING' is also being used as a corporate name by many others against whom no action has been taken by the plaintiff. As per direction of the Hon'ble Apex Court, since the matter was taken up for early disposal, issues were framed by this Court by an order dated 23rd November, 2016. This Court framed the following issues :- 1. "Is the suit maintainable in its present form and in law? 2. Whether the use of the name DARJEELING LOUNGE by the defendant in respect of its refreshment lounge services constitutes an act of infringement under the Trademarks Act, 1999 and the Geographical Indication Act, 1999?
(3.) Whether the use of the name DARJEELING LOUNGE by the defendant in respect of its refreshment lounge services constitutes an act of passing off and unfair competition under the Trademarks Act, 1999 and the Geographical Indication Act, 1999?;


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