Author: Kumari Anushka Srivastava, Lloyd Law college
INTRODUCTION
The case of Tea Board of India v. ITC Limited is a landmark judgement in the field of Indian intellectual property law; it is considered as the first judicial interpretation of Geographical Indications (GI). Decided by the Calcutta High Court, the judgment emphasized the limited scope of GI protection while refusing to grant an injunction against ITC Limited for using the word “Darjeeling” in naming its hotel lounge.
GEOGRAPHICAL INDICATIONS
A geographical indication is a type of an intellectual property right. It is a sign used for products that have specific geographical origin and have the qualities recognition from that origin. The ‘Darjeeling tea’ or the oranges from Nagpur or the ‘banarsi pan’ are a few products which have been given the GI tag in India
TEA BOARD OF INDIA V. ITC LTD
BACKGROUND
The dispute revolves around the use of word Darjeeling in the lounging services provided by a hotel of ITC. The plaintiff is a statutory body which is set up under the Tea Act, 1953. The tea board is responsible for promoting and protecting the exclusivity of the tea. Darjeeling Tea has earned a unique reputation across the globe for its exclusive flavour, aroma, and quality, which are inextricably tied to its place of origin in the Darjeeling hills of West Bengal.
The conflict started on the use of “Darjeeling” in Calcutta (now Kolkata) by ITC. Tea board of India laid objections for this usage of name “Darjeeling”, its associated logo under the Geographical Indications of Goods (Registration and Protection) Act, 1999. ITC argued that the word “Darjeeling” is not confined to the tea grown there but carries with it the essence of the region itself—its misty mornings, distant snow-capped mountains, and the distinctive character and charm of its people and culture.
The plaintiff’s allegations were that ITC named a section of its luxury hotel, ITC Sonar, as the “Darjeeling Lounge”. This use was an infringement of registered geographical indications mark as this use may mislead the public into believing that lounge is officially concerned with or endorsed by Darjeeling tea. Thus, the usage of name constitutes passing off. Tea board further had a say that use of the term causes dilution of the term “Darjeeling” and weakens the distinctiveness and reputation of the brand, thereby eroding its exclusivity.
The defendant disproved the allegations of tea board and asserted of the fact that GI acts application is strictly limited to goods only. The act gives right to sue in cases where there are infringement only where the GI is used in respect of the registered goods. Further they added by saying that ownership of a certification trademark concerning a good does not entitle the proprietor to initiate action against the use of such mark in services or by person connected thereto. The lounge of the defendant’s hotel was named in 2003 which was prior to the enforcement of GI Act. In response to passing off, the “Darjeeling lounge” offers a variety of food and beverages, not limited to Darjeeling tea. The defendant maintained that the use of the name “Darjeeling Lounge” was consistent with the provisions of the Trade Marks Act. It was further argued that the present suit was not maintainable in light of Section 26 of the Geographical Indications of Goods (Registration and Protection) Act, 1999.
ANALYSIS
The Geographical Indications of Goods (Registration and Protection) Act, 1999, as reflected in its Preamble, was enacted with the objective of providing a framework for the registration and protection of geographical indications specifically in relation to goods.
Section 2(1)(f) defines “goods” broadly to include agricultural, natural or manufactured products, handicrafts, industrial goods, and foodstuffs.
Section 2(1)(g) of the Geographical Indications Act, 1999, defines the term “indication” broadly to include not only names but also geographical expressions, symbolic or figurative representations, or any combination of these, so long as they point to the geographical origin of the goods.
Section 2(1)(e), which is central to the statute, defines a geographical indication as an indication that identifies goods as originating from a particular country, region, or locality, where the quality, reputation, or other characteristics of the goods are essentially linked to that geographical origin.
Section 22(1) provides that a GI is infringed if:
(a) it is used on goods in a manner that misleads consumers as to their origin, or
(b) it is used in a way that constitutes unfair competition, including certain forms of passing-off.
Additionally, the Defendant invokes Section 26(4), claiming that since the Plaintiff was aware of the lounge’s name in 2005 but filed suit only after five years, the claim is time-barred.
JUDGEMENT
Justice Munshi, addressing the central issue, held that there was no infringement under the Geographical Indications of Goods (Registration and Protection) Act, 1999, since the defendant’s “Darjeeling Lounge” did not pertain to goods. The Court clarified that the rights conferred upon the plaintiff through the registration of “Darjeeling” extended only to tea, and not to any other category of goods or services.
It was further observed that “Darjeeling” was not a trademark in itself but a geographical indication restricted to denoting the origin of tea produced in the Darjeeling region. The Court emphasised that the scheme of the GI Act is expressly limited to goods, and the defendant’s lounge—being in the nature of a service—did not fall within its statutory ambit. Consequently, the plaintiff could not assert any proprietary right over the word “Darjeeling” in relation to services or in connection with goods other than tea.
IMPACT OF JUDGEMENT
LEGAL POSITION BEFORE THE CASE
The scope of the Geographical indications of goods act,1999 was not judicially clarified before the case. There happened to be ambiguity about the applicability on services. An assumption prevailed amngst the owners that they had monopoly over the word/ mark in any commercial context, irrespective of whether it related to goods or services.
LEGAL POSITION AFTER THE CASE
The court clarified that the act applies to only goods, not services. The owners can enforce rights only in relation to the specific goods for which GI is registered and recognised. Therefore, the tea board contentions of ITC using Darjeeling in their services was not an infringement.
CONCLUSION
The Darjeeling GI case clearly demarcated the boundaries of protection under the Geographical Indications of Goods Act, 1999. The Court reaffirmed that a GI confers rights only in respect of the specific goods for which it is registered, and cannot be extended to unrelated goods or services. By refusing to recognize the plaintiff’s claim over the use of “Darjeeling” in relation to a hotel lounge, the judgment prevented the unwarranted monopolisation of geographical terms.
The decision is significant because it safeguards both the integrity of the GI framework and the freedom of businesses in other sectors, ensuring a balance between protection of genuine producers and the legitimate use of geographical words in different contexts.
In essence, the case stands for the principle that Geographical Indications are goods-specific, origin-based rights and cannot be transformed into an all-encompassing trademark over a word.
FAQS
Why is the case tea board, India v ITC ltd considered important?
The case is considered important because it put a clarification on scope of the act.
What was main issue before court?
The issue revolved around the use of word “Darjeeling” by ITC for its hotel lounge, and that it amounted to infringement.
What was rule established in this case?
In the case of tea board, India v ITC it was held that Geographical Indications are confined to goods, and the rights of the proprietor cannot be stretched to cover services or unrelated goods.
