- (1.) 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.
(2.) 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 the logo were the very first geographical indications to be registered under the G.I. Act with numbers 1 and 2 respectively in Class 30 in respect of tea. 8) The defendant is a company incorporated under the Companies Act, 1956 having its registered office at 37, Jawaharlal Nehru Road, Kolkata 700071 and the defendant carries on business and describes itself as an industrial conglomerate with a presence in various commercial enterprises including the hospitality industry and owns and operates several hotels and resorts. 9) One of the hotels owned and operated by the defendant is a hotel named ITC Sonar Bangla (hereinafter referred to as the hotel'). In April, 2005 the plaintiff became aware of the defendant's impugned trademark application for DARJEELING LOUNGE in Class 41 when the same was advertised in the Trademarks Journal. 10) Immediately upon coming to know of the purported attempted registration of the mark DARJEELING by the defendant, the plaintiff made an enquiry into the matter and came to know that a portion of the hotel at the ground floor with the name DARJEELING LOUNGE had been made available for use by all customers/patrons having access to the hotel, in the said lounge, which is for practical purpose like a restaurant on its premises, the said hotel was serving food, beverages and providing other varieties of consumables to its consumers. 11) The plaintiff objected to the said registration and ultimately came to know that by operation of Section 21(2) of the Act, the said application for registration DARJEELING LOUNGE was abandoned. 12) The plaintiff, however, came to know from subsequent enquiry that though the defendant was not pursuing its application for registration, it was wrongfully and fraudulently pursuing and had not discontinued the use of the said proprietary name of the plaintiff by using name DARJEELING LOUNGE. 13) The edible commodities and beverages sold and served in the said lounge by the defendant indisputably have no connection whatsoever with Darjeeling region or the geographical indication DARJEELING and the intention of the defendant to convey a nexus therewith is false and fraudulent. By the use of the impugned name DARJEELING for the purposes of its lounge and for all purposes connecting therewith the defendant has willfully and deliberately falsified a geographical indication registered and owned by the plaintiff, and has also falsely applied the same to goods sold in the said lounge which have nothing whatsoever to do with the Darjeeling District or Darjeeling tea. 14) The Lounge which the defendant is using as the impugned mark DARJEELING LOUNGE catered to a wide range of beverages and thus such use in connection with beverages other than Darjeeling teas is an act of unfair competition inasmuch as it discredits the famous Darjeeling tea and misleads the defendant's patrons as to the nature of the beverages served there.
(3.) Hence the suit. In connection with the aforesaid suit, the plaintiff prayed for an interlocutory injunction in terms of the main prayer made in the suit so that during the pendency of the suit, the defendant was restrained from using the 7 lounge of the said hotel by describing the same as DARJEELING LOUNGE' in violation of the registered mark of the plaintiff or by passing off. The aforesaid application was opposed by the defendant thereby contending, in substance, that by virtue of the Registration of the plaintiff under Act or G.I. Act, the plaintiff had not obtained any right to restrain the defendant from rendering its service to its customers in the Lounge named DARJEELING LOUNGE and adoption of such a name by the defendant had not violated any of the rights created in favour of the plaintiff by virtue of its Registration either under the Act or under the G.I. Act. The defendant, thus, prayed for dismissal of the said application for interlocutory relief. ;