Even as the Tea Board of India has moved the Division Bench of the Calcutta High Court alleging trademark infringement over the use of the word ‘Darjeeling’ for sale of goods at one of ITC’s hotels in Kolkata, it is hopeful that the tussle can be solved amicably. The board is also hopeful that it can negotiate with ITC to allow it to use the geographical indication (GI)-protected Darjeeling logo at its hotel lounge. “We have already spent a huge amount of money to protect the GI tag of Darjeeling and will spend more if necessary. Darjeeling is a protected trademark of the board and has a historical value. I am hopeful that the issue can be solved amicably,” said A K Ray, deputy chairman of the Tea Board, on the sidelines of the 47th Annual General Meeting of the Tea Association of India. The board has claimed that the word ‘Darjeeling’ itself is protected by the GI tag, and it has sole authority over the name, so no entity could use the word without its approval.
But ITC has been contesting the claim.Ray said if ITC continued to use the word ‘Darjeeling’ at its lounge in ITC Sonar, the hotelier would have to use the GI-protected Darjeeling logo as well. ITC Sonar would otherwise have to stop using the name. Asked about the issue, an ITC spokesperson said: “We will not comment on this issue since the matter is sub judice.” Earlier, the Calcutta High Court had dismissed the board’s nine-year-old appeal which alleged FMCG major ITC was infringing upon its certification-mark rights. Since 2003, ITC, which owns the ITC Sonar hotel in Kolkata, has been operating a premier guests-obly executive lounge, called Darjeeling Lounge. It led the board, which owns GI tag and certification mark over the use of the name ‘Darjeeling’, to allege an infringement of its legal rights. The board also alleged that people visiting this lounge would be misguided to believe that ITC Sonar has an association with producers of Darjeeling tea and that any food and beverage they might be consuming in this lounge originated only from Darjeeling. Ray claimed only the board had the power to certify tea as the prized Darjeeling tea originating from the 87 gardens in that area of West Bengal. ITC had contended the board’s claim on the ground that since the board had only certification trademark — the right to certify tea as originating from Darjeeling — naming the hotel’s lounge Darjeeling Lounge did not amount to infringement of the board’s powers. The Calcutta High Court, in its order, had observed that though the board was in possession of the GI tag over Darjeeling, it had not obtained a registered trademark under certain provisions of the Trademarks Act, 1999 (it had only certification trademark registration under the Trade and Merchandise Marks Act, 1958, which did not give the board full powers over the trademark). Legal sources suggested that the board’s power, hence, was limited to certifying certain goods (in this case, tea) as Darjeeling, and that did not give the board control to monopolise using the name Darjeeling if it was used in services like lounge.