ITC, which has been operating a premier executive lounge by the name Darjeeling Lounge at its Kolkata Hotel since 2003, is arguing that the word Darjeeling could not be exclusively claimed by the Board despite its geographical indications (GI) and trademark registrations, a stand opposed by the Tea Board.
A bench headed by Justice KS Radhakrishnan has posted the matter for final hearing on September 25. The GI registry is a mechanism provided for under Indian law in 2003 to enable strong IPR protection for products that gain exclusivity due to the place of origin. This IPR is different from patents, trademarks and copyrights because the right is vested with the relevant community, rather than individuals or firms.
The board has challenged the Calcutta High Courts order of August last year that held that the word Darjeeling is not the exclusive right of the Board, deciding in favour of the Kolkata hotel ITC Sonar and its Darjeeling Lounge.
According to the board, the Darjeeling name and logo are Protected GIs under the European Commission Regulation and are registered in the US, UK, EU, Australia, France, Japan Germany Spain and other countries.
By virtue of its home protection coupled with an effective international protection, the Board has been able to effectively prevent many third parties from misappropriating and misusing the famous and well-known GI Darjeeling in many parts of the world, the board said in its appeal.
However, ITC has argued that the Tea Board could only exercise its rights in the registered marks only to protect goods and not services.
It pointed out that its lounge had nothing to do with any goods, thus the question of application of the GI Act is out of place since the Act only prevents infringement of GI in relation to only goods and not in relation to services in which the board is indulging into.
The question of unfair competition does not arise in the absence of ITC competing with the board, it said, adding that the Board was aware of Darjeeling Lounge in 2005, and decided to sue only in 2010. The Tea Board sued the ITC Sonar, Kolkata Hotel, for its Darjeeling Lounge as the name for its executive lounge. However, the High Court refused to restrain ITC from using the name by holding that the registration does not confer any right over the word Darjeeling so as to prevent ITC from rendering its services of hospitality to the public by naming one of the lounges of its hotel as Darjeeling Lounge.
It held that grant of Geographical Indication registration over Darjeeling Tea does not prevent others from using the word Darjeeling independently or along with another suffix or prefix.