A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production. The connection between the goods and the place becomes so famous that any reference to the place reminds the goods being produced there and vice versa. E.g. The reference to the District of Champagne, France brings to mind the wine ‘Champagne’ which is being produced there.
In France, the concept of geographical indications emerged with the law of 1919 that established geographical indications as collective intellectual property and granted legal recognition to unions for the protection of appellations of origin.
At the international level the Lisbon agreement for the protection of Appellations of Origin and their International Registration, 1958, was adopted to provide for the protection of “appellations of origin”, which is defined to mean the “geographical name of the country, region, or locality, it serves to designate the product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors”.
Definition
The Geographical Indications of Goods (Registration and Protection) Act, 1999 defines “geographical indication” in relation to goods as ‘an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of the country, or a region or locality in that territory, where a given quality, reputation or other characteristics of such goods is essentially attributable to its geographical origin and in the case where such goods are manufactured goods, one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be’.
The term ‘goods’ has been defined to mean ‘any agricultural, natural or manufactured goods or any goods of handicraft or of industry and includes food stuff’. ‘Indication’ has been defined to include ‘any name, geographical or figurative representation or any combination of them conveying or suggesting the geographical origin of goods to which it applies’.
Rationale
Geographical indications have features that respond to the needs of indigenous and local communities and farmers. Geographical indications:
1. Are based on collective traditions and a collective decision-making process;
2. Reward traditions while allowing for continued evolution;
3. Emphasize the relationship between human efforts, culture, land resources and environment; and
4.Are not freely transferable from one owner to another.
Geographical indications, therefore, reflect inter alia, the traditions, culture, human efforts, resources and environment of particular regions.
Functions
Geographical indications are valuable property to producers from particular geographical regions. They basically perform three functions.
a. They identify goods as originating in a particular territory or a region or locality in that territory;
b. They suggest to the consumers that the goods come from an area where a given quality, reputation or other characteristics of the goods is essentially attributable to their geographical origin; and
c. They promote the goods of producers of a particular area.
Difference between Trade Mark & Geographical Indication
Although the geographical indications are as valuable as trademarks, yet the functions of geographical indications are different from that of the trademarks. Trademarks are owned by enterprises and used to identify products and services in the market, in particular, to distinguish them from competing products and services whereas a geographical indication never belongs to a particular enterprise. A geographical indication can be used by several enterprises have the same time, provided that the products for which it is used originate in the geographical area to which the indications refer.
Development
Prior to 1999, there was no specific law in India on geographical indications which could adequately protect the interests of the producers. Despite India being a party to the TRIPS agreement, she did not enact a law on geographical indications until 1999. The judiciary, however, has been active in preventing persons to take unlawful advantage of geographical indications. [Mohan Meakin v Scotch Whisky (1980) & Scotch Whisky Association v Pravara Sahakar Karkhana (1992)]
Register
The Geographical Indications Registry has been established in Chennai to administer the Geographical Indications Act, 1999 under the Controller General of Patents, Designs and Trademarks.
Registration
The geographical indication may be registered in respect of any or all of the goods, comprised in a prescribed class of goods and in respect of a definite territory of a country or region or locality, as the case may be. The classification shall, as far as possible, conform to the International Classification of goods. Where any question arises regarding the classification of goods or the determination of the definite area, the registrar whose decision in the matter shall be final shall determine it.
Section 9 of the act prohibits the registration of certain geographical indications:
A geographical indication-
a. The use of which would be likely to deceive or cause confusion; or
(Confusion regarding GI may be visual or phonetic in nature i.e. contextual confusion or as to trade origin. The purchaser may actually be deceived. They may be induced to believe the goods sold under the GI emanates from the same trade source. The deception or confusion need not be actual. It may also be probable.)
b. The use of which would be contrary to any law for the time being in force; or
(For example, if the GI applied for registration is prohibited under the Emblems & Names (Prevention of improper use) Act, 1950, it shall be refused registration)
c. Which comprises or contains scandalous or obscene matter; or
(It has to be decided on the facts and circumstances of each case. In case of objection to the registration, the onus is on the applicant to show that the GI applied for is not scandalous or obscene)
d. Which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or
e. Which would otherwise be disentitled to protection in a court; or
f. Which are determined to be generic names or indications of goods and are, therefore, not or ceased to be protected in their country of origin, or which have fallen into disuse in that country; or
(Generic names or indications in relation to goods means the name of goods which although relates to the place of the region where the goods were originally produced and manufactured, has lost its original meaning and has become the common name of such goods and serves as a designation for or authentication of the kind, nature, type or other property or characteristics of the goods.)
g. Which, although literally true as to the territory, region or locality in which the goods originate, butfalsely represent to the persons that the goods originate in another territory, region or locality, as the case may be, shall not be registered as a geographical indication.
Explanation 1. - For the purposes of this section, "generic names or indications'', in relation to goods, means the name of a goods which, although relates to the place or the region where the goods was originally produced or manufactured, has lost its original meaning and has become the common name of such goods and serves as a designation for or indication of the kind, nature, type or other property or characteristic of the goods.
Explanation 2. - In determining whether the name has become generic, account shall be taken of all factors including the existing situation in the region or place in which the name originates and the area of consumption of the goods.
Note:
Registration of Homonymous (ambiguous or having the same designation) geographical indications.
Where the geographical indication is homonymous indication to an already registered geographical indication, the material factors differentiating the application from the registered geographical indications shall be provided. The registrar in that case would have to consider the practical question to differentiate the two homonymous indications, ensure equitable treatment of the producers of the goods concerned and avoid confusion in the market. It is of paramount importance that the consumers of such goods are not confused or misled in consequence of such a registration.
Application
An application for registration of a geographical indication may be made to The Registrar of GI by any association of persons for producers or any organisation or authority representing the interests of the producers of the concerned goods. The applicant has to be a legal entity and should be representing the interest of the producers of the good applied for. Any such organisation or association being not that of the producers may have to prove that they represent the interest of the producers. Any applicant authority also has to prove that they represent the interest of the producers.
Note:
It is noteworthy that many communities which are holders of traditional knowledge and goods produced and sold using geographical indications have not formed associations. In many cases, it is the distributors of these groups who have formed associations, and they may be in a position to obtain registration for the geographical indications. Thus, as per the law these associations will have to prove that they represent the interest of the producers.
The application for registration must contain the following:
a. A statement as to how the geographical indication serves to designate the goods as originating from the concerned territory of the country or region or locality in the country, as the case may be, in respect of specific quality, reputation or other characteristics of which are due exclusively or essentially to the geographical environment, with its inherent natural and human factors, and the production, processing or preparation of which takes place in such territory, region or locality, as the case may be;
b. The class of goods to which the geographical indication shall apply;
c. The geographical map of the territory of the country or region or locality in the country in which the goods originate or are being manufactured;
d. The particulars regarding the appearance of the geographical indication as to whether it is comprised of the words or figurative elements or both;
e. A statement containing such particulars of the producers of the concerned goods, if any, proposed to be initially registered with the registration of the geographical indication as may be prescribed; and
f. Such other particulars as may be prescribed.
A document entitled ‘statement of case’ is to be annexed with application form which shall contain:
a) Specification – A brief statement on specifications and quality parameters of the goods in about 50 to 100 words.
b) Description – Detailed description of the Goods & geographical linkage.
c) Proof of Origin – Historic proof in the form of documentary evidence to prove the existence of the Geographical Indications.
d) Method of Production – Process involved, raw materials & tools, packaging specialty if any.
e) Uniqueness – Special Characteristics if any.
f) Inspection Body – Details of the Inspection Body set up by the applicant to monitor the production in respect of quality, integrity & consistency of the product.
g) Other – The present scenario of the GI Product i.e. the market, details of exports, if any, total turnover of the product & the activities undertaken by the applicant association in development & promotion of the GI.
a) Specification – A brief statement on specifications and quality parameters of the goods in about 50 to 100 words.
b) Description – Detailed description of the Goods & geographical linkage.
c) Proof of Origin – Historic proof in the form of documentary evidence to prove the existence of the Geographical Indications.
d) Method of Production – Process involved, raw materials & tools, packaging specialty if any.
e) Uniqueness – Special Characteristics if any.
f) Inspection Body – Details of the Inspection Body set up by the applicant to monitor the production in respect of quality, integrity & consistency of the product.
g) Other – The present scenario of the GI Product i.e. the market, details of exports, if any, total turnover of the product & the activities undertaken by the applicant association in development & promotion of the GI.
The Procedure
STEP 1: Filing of application
Please check whether the indication comes within the ambit of the definition of a Gl under section 2(1)(e).
The association of persons or producers or any organization or authority should represent the interest of producers of the concerned goods and should file an affidavit how the applicant claims to represent their interest.
- Application must be made in triplicate.
- The application shall be signed by the applicant or his agent and must be accompanied by a statement of case.
- Details of the special characteristics and how those standards are maintained.
- Three certified copies of the map of the region to which the GI relates.
- Details of the inspection structure if any to regulate the use of the GI in the territory to which it relates.
- Give details of all the applicants together with address. If there is a large number of producers a collective reference to all the producers of the goods may be made in the application and the G.I., if registered will be indicated accordingly in the register.
Send your application to the following address in India:
Geographical Indications Registry
Intellectual Property Office Building
Industrial Estate, G.S.T Road
Guindy, Chennai – 600 032
Phone: 044 – 22502091-93 & 98
Fax: 044 – 22502090
E-mail:gir-ipo@nic.in
Website: ipindia.gov.in
Intellectual Property Office Building
Industrial Estate, G.S.T Road
Guindy, Chennai – 600 032
Phone: 044 – 22502091-93 & 98
Fax: 044 – 22502090
E-mail:gir-ipo@nic.in
Website: ipindia.gov.in
The applicant must have an address for service in India. Generally, application can be filed by (1) a legal practitioner (2) a registered agent.
STEP 2 and 3: Preliminary scrutiny and examination
- The Examiner will scrutinize the application for any deficiencies.
- The applicant should within one month of the communication in this regard, remedy the same.
- The content of statement of case is assessed by a consultative group of experts will versed on the subject.
- The will ascertain the correctness of particulars furnished.
- Thereafter an Examination Report would be issued.
STEP 4: Show cause notice
- If the Registrar has any objection to the application, he will communicate such objection.
- The applicant must respond within two months or apply for a hearing.
- The decision will be duly communicated. If the applicant wishes to appeal, he may within one month make a request.
- The Registrar is also empowered to withdraw an application, if it is accepted in error, after giving on opportunity of being heard.
STEP 5: Publication in the geographical indications Journal
Every application, within three moths of acceptance shall be published in the Geographical Indications Journal.
STEP 6: Opposition to Registration
- Any person can file a notice of opposition within three months (extendable by another month on request which has to be filed before three months) opposing the GI application published in the Journal.
- The registrar shall serve a copy of the notice on the applicant.
- Within two months the applicant shall sent a copy of the counter statement.
- If he does not do this be shall be deemed to have abandoned his application. Where the counter-statement has been filed, the registrar shall serve a copy on the person giving the notice of opposition.
- Thereafter, both sides will lead their respective evidences by way of affidavit and supporting documents.
- A date for hearing of the case will be fixed thereafter.
STEP 7: Registration
- Where an application for a GI has been accepted, the registrar shall register the geographical indication. If registered the date of filing of the application shall be deemed to be the date of registration.
- The registrar shall issue to the applicant a certificate with the seal of the Geographical indications registry.
STEP 8: Renewal
A registered GI shall be valid for 10 years and can be renewed on payment of renewal fee.
STEP 9: Additional protection to notified goods*
Additional protection for notified goods is provided in the Act.
(*Additional protection to certain goods: An application may be made to the registrar in respect of goods notified by the central Government for additional protection for a registered geographical indication in Form GI-9 accompanied in triplicate along with a statement of case and shall be accompanied with the copy of the notification issued.The application shall be made jointly by the registered proprietor of the Geographical indications in India and by all the producers of the Geographical indication.)
STEP 10: Appeal
Any person aggrieved by an order or decision may prefer an appeal to the intellectual property appellate board (IPAB) within three months. The address of the IPAB is as follows:
Intellectual Property Appellate Board
Annexe 1, 2 nd Floor, Guna Complex,
443, Anna Salai, Chennai – 600 018
Annexe 1, 2 nd Floor, Guna Complex,
443, Anna Salai, Chennai – 600 018
Authorised User
Since a registered the graphical indication is a community intellectual property and the registered proprietor is an organisation or authority, the system of registration of authorised users offers protection to the individual producers manufacturers and traders. This system ensures the bona fide of a GI product dealt with or produced by a genuine person and further ensures the protection to the consumers.
Authorised users get the exclusive right to use the registered geographical indication and can independently sue an infringer; and also renew or restore such indications, if the registered proprietor fails to renew the same.
Prohibition of Registration of Geographical Indication as Trade Mark
The act prohibits the registration of a geographical indication as a trademark as it could lead to expropriation of a public property by an individual leading to confusion in the market.
Note:
· The act provides for protection of a trademark which contains or consists of a geographical indication which has been applied for or registered in good faith under the trademark law or where such trademarks have been used in good faith before the commencement of the geographical indications act or before the date of filing of an application for registration of a geographical indication, even if the trademark is identical with or similar to such a geographical indication.
· The act does not apply to a geographical indication with respect to goods or classes of goods which have become the common name of such goods in India on or before January 1, 1995.
· The act does not affect the right of any person to use, in the course of trade, that person's name or the name of that person's predecessor in business, except where such name is used in such a manner as to confuse and mislead the people.
· No action in connection with the use or registration of a trademark shall be taken after five years from the date from which such use or registration which infringes any registered geographical indication registered has become known to the registered proprietor or to the authorised user.
Term of Geographical Indication
The registration of a geographical indication and authorised user shall be for a period of 10 years. Both the registrations may be renewed from time to time on the payment of a prescribed fee for a term of 10 years from the date of last renewal of registration for an indefinite period. However, if the renewal is not effected within the prescribed or extended time, the geographical indication or the authorised user, as the case may be is liable to be removed from the records. Provision is also made for restoration of registration.
Where a geographical indication has been removed from the register for failure to pay the renewal fee, it shall nevertheless be deemed to be geographical indication on the register unless the tribunal is satisfied either:
a) That there been no bona fide trade use of that geographical indication within two years immediately preceding its removal or;
b) That no deception or confusion would be likely to arise from the use of the geographical indication.
Rights Conferred by Registration
The rights conferred by registration are as follows:
a) To the registered proprietor and authorised user or users the right to obtain relief in respect of infringement of such a geographical indication;
b) To the authorised user the exclusive right to the use of the geographical indication in relation to the goods in respect of which the geographical indication is registered.
However, the right of authorised user to use the graphical indication is subject to the conditions and limitations to which the registration is subject. Two or more authorised users of a registered geographical indication shall have co-equal rights.
Infringement
A person who is not an authorised user of a registered geographical indication infringes it when he:
a) Uses such geographical indication by any means in the designations or presentation of goods that indicates or suggests that such goods originate in a geographical area other than the true place of origin of such goods in a manner goods which misleads the persons as to the geographical origin of such goods; or
b) Uses any geographical indication in such manner which constitutes an act of unfair competition including passing off in respect of registered geographical indication.
Explanation 1. -"Act of unfair competition'' means any act of competition contrary to honest practices in industrial or commercial matters.
Explanation 2. - For the removal of doubts, it is hereby clarified that the following acts shall be deemed to be acts of unfair competition, namely:
a. All acts of such a nature as to create confusion by any means whatsoever with the establishment, the goods or the industrial or commercial activities, of a competitor; [The Tea Board vs ITC Limited (2016)]
b. False allegations in the course of trade of such a nature as to discredit the establishment, the goods or the industrial or commercial activities, of a competitor;
c. Geographical indications, the use of which in the course of trade is liable to mislead the persons as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods;
c) Uses another geographical indication to the goods which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the persons that the goods originate in the territory, region or locality in respect of which such registered geographical indication relates.
Note
· Where the goods in respect of which a geographical indication has been registered are lawfully acquired by a person other than the authorised user of such geographical indication, further dealing in those goods by such person including processing or packaging does not constitute an infringement of such a geographical indication, except where the condition of goods is impaired after they have been put in the market.
· A geographical indication once registered shall prima facie be evidence of the validity of the registration and the certificate of registration shall be admissible in all courts and before the Appellate Boards in all legal proceedings relating to geographical indication without further proof for production of the original. However, the right of action in respect of an unregistered geographical indication shall not be affected by the aforesaid provision.
· A geographical indication is public property. Any right to a registered geographical indication is not a subject matter of assignment, transmission, licensing, pledge, mortgage or any such other agreement. However, on the death of an authorised user his right in the registered geographical indication shall devolve on his successors in title.
Rectification & Correction of Register
Power to cancel or vary registration and to rectify the register. Section 27 of the Act reads as follows:
1) On application made in the prescribed manner to the Appellate Board or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a geographical indication or authorised user on the ground of any contravention, or failure to observe the condition entered on the register in relation thereto.
2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
3) The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
4) The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2).
5) Any order of the Appellate Board rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.
Correction of register
Under Section 28; the Registrar may, on an application made in the prescribed manner by the registered proprietor or the authorised user, —
i) Correct any error in the name, address or description of the registered proprietor or the authorised user, as the case may be, of a geographical indication, or any other entry relating to the geographical indication on the register;
ii) Enter any change in the name, address or description of the association of persons or of producers or any organisation or authority, as the case may be, who is registered as proprietor of a geographical indication on the register;
iii) Cancel the entry of a geographical indication on the register;
iv) Strikeout any goods or class or classes of goods from those in respect of which a geographical indication is registered from the register and may make any consequential amendment or alteration in the certificate of registration, and for that purpose, may require the certificate of registration to be produced to him.
Alteration of registered geographical indications
Under Section 29 of the Act;
1. The registered proprietor of a geographical indication may apply in the prescribed manner to the Registrar for leave to add to or alter the geographical indication in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.
2. The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if, within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of the opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.
3. Where leave is granted under this section, the geographical indication as altered shall be advertised in the prescribed manner, unless the application has already been advertised under sub-section (2).
(E.g. If ‘Darjeeling Tea’ is registered as a GI in English, a subsequent request may be made to depict the registered GI in Hindi (Devanagiri Script)
Application of Geographical Indication to Goods
Under Section 37 of the Act, a person shall be deemed to apply a geographical indication to goods who —
a) Applies it to the goods themselves; or
b) Applies it to any package in or with which the goods are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture; or
c) Places, encloses or annexes any goods which are sold or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture, in or with any package or other thing to which a geographical indication has been applied; or
d) Uses a geographical indication in any manner reasonably likely to lead to the belief that the goods in connection with which it is used are designated or described by that geographical indication; or
e) In relation to the goods uses a geographical indication in any sign, advertisement, invoice, catalogue, business letter, business paper, price list or other commercial documents and goods are delivered to a person in pursuance of a request or order made by reference to the geographical indication as so used.
A geographical indication shall be deemed to be applied to goods whether it is woven in, impressed on, or otherwise worked into, or annexed or affixed to, the goods or to any package or other thing.
Infringement & Passing Off
· Institution of a Suit before the District Court
A suit:
a) For the infringement of a registered GI; or
b) Relating to any right in a registered GI; or
c) For passing off arising out of the use by the Defendant of any GI which is identical with or deceptively similar to the geographical indication relating to the plaintiff, whether registered or unregistered,
a) For the infringement of a registered GI; or
b) Relating to any right in a registered GI; or
c) For passing off arising out of the use by the Defendant of any GI which is identical with or deceptively similar to the geographical indication relating to the plaintiff, whether registered or unregistered,
Shall be instituted before the district court having jurisdiction to try the suit.
The district court having jurisdiction includes a district court within the local limits of whose jurisdiction, the person or one of the persons instituting the suit or proceeding actually and voluntarily resides or carries on business or personally works for gain. The term “person” includes the registered proprietor and the authorised user.
· Civil Remedies
The act provides for the following simple remedies for the infringement of a registered geographical indication:
a) Injunction.
b) Damages or account of profits.
c) Delivery-up of the infringing labels and indications.
These remedies are inclusive, not exhaustive and the court may provide some other remedies in addition to the aforesaid such as Anton Piller order.
Injunction
Injunction includes temporary and permanent injunction. Further, the court may also order an ex parte judgement for:
a) Discovery of documents.
b) Preserving of infringing goods, documents or other evidence which are related to the subject matter of the suit; and
c) Restraining the defendant from disposing of or dealing with his assets in a manner that may adversely affect the plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
The aforesaid remedy of injunction is more effective and can prevent a greater harm to the plaintiff.
Damages or account of Profits
The remedy of damages or account of profits is not cumulative but alternative. The plaintiff has to elect one of the two remedies at an earlier stage of the suit. The remedy of damages (other than nominal damages) or account of profits may be denied with the defendant satisfies the court that he was unaware and had no reasonable grounds for believing that the geographical indication of the plaintiff was registered when he commenced to use it: and that when he became aware of the existence and nature of the plaintiff’s right in the graphical indication, he forthwith ceased to use it.
Delivery-up of the infringing labels and indications
It is in the discretion of the court to order the defendant to deliver-up the infringing labels and indications for destruction and erasure. The court by taking the relevant circumstances into account may or may not order for such remedy.
Passing Off
All the aforesaid remedies that are available for the infringement of a registered Geographical Indication are also available in a passing off action in case of unregistered geographical indication.
Note
Usually, the invalidity of registration is pleaded by the accused against the charge of falsely applying a geographical indicator; or selling goods to which false geographical indication is applied.
Cases
1. Mohan Meakin v Scotch Whisky (1980)
The Delhi High Court affirmed the order of the Registrar of Trade Marks by which he refused to register the applicant’s mark proposed to be used on whisky produced in India consisted of the words ‘Highland Chief; and the device of the head and shoulders of a gentleman dressed in Scottish highland costume wearing, inter alia, feather bonnet and plaid and edge with tartan, a well-known symbol of Scottish origin.
2. Scotch Whisky Association v Pravara Sahakar Karkhana (1992)
Indian courts have maintained the action of passing off to protect geographical indications.
In this case, the plaintiff, the Scotch Whisky Association, a company incorporated under the Companies Act of the United Kingdom instituted the passing-off action against the defendants; a manufacturer of various brands of Indian whisky known as ‘Blended Scotch whiskey’ or ‘Blended with Scotch’, under various brands, namely ‘Drum Beater’ and ‘God Tycoon.’ On these facts the Bombay High Court held:
a. The plaintiffs have sufficient interest and locus standi to prevent passing-off of Indian whisky manufactured by the defendant as ‘Scotch whisky’ and to prevent damage to the reputation and goodwill of Scotch whisky.
b. The plaintiffs have made out a strong prima facie case that the defendants are passing off their goods as Blended Scotch whisky or goods closely and substantially associated with Blended Scotch whisky when in fact they are not. The plaintiffs have, therefore, made out a case for grant of an interim injunction on the merits of the case.
c. The defendants are deliberately and intentionally passing off their product as if ‘Blended Scotch’ although as a matter of law, even unintentional misrepresentation is also actionable. It is unfortunate that the defendants have resorted to an unfair device by using the words ‘Blended with Scotch’ and indulged in colourable imitation and unfair trading in an attempt to reap the harvest by an appropriation of the plaintiff’s goodwill in Scotch whisky trade. The attempt of the defendants to justify the use of the words ‘Blended with Scotch’ has totally failed. The balance of convenience is in favour of the plaintiffs and not in favour of the defendants.
d. The defendant is restrained from advertising or offering for sale or distributing in any country whisky which is not Scotch whisky with the description ‘Blended with Scotch whisky’ or ‘Blended Scotch whisky’ or ‘Blended with six-year-old Scotch’ or ‘Blended with six-year-old Vatted Malt Scotch’ or the word ‘Scotch’ or the impugned labels or the impugned carton which bear the mark ‘Gold Tycoon’ containing the word ‘Scotch’ or the description ‘Blended Scotch whisky’ or ‘Blended with six year’.
a. The plaintiffs have sufficient interest and locus standi to prevent passing-off of Indian whisky manufactured by the defendant as ‘Scotch whisky’ and to prevent damage to the reputation and goodwill of Scotch whisky.
b. The plaintiffs have made out a strong prima facie case that the defendants are passing off their goods as Blended Scotch whisky or goods closely and substantially associated with Blended Scotch whisky when in fact they are not. The plaintiffs have, therefore, made out a case for grant of an interim injunction on the merits of the case.
c. The defendants are deliberately and intentionally passing off their product as if ‘Blended Scotch’ although as a matter of law, even unintentional misrepresentation is also actionable. It is unfortunate that the defendants have resorted to an unfair device by using the words ‘Blended with Scotch’ and indulged in colourable imitation and unfair trading in an attempt to reap the harvest by an appropriation of the plaintiff’s goodwill in Scotch whisky trade. The attempt of the defendants to justify the use of the words ‘Blended with Scotch’ has totally failed. The balance of convenience is in favour of the plaintiffs and not in favour of the defendants.
d. The defendant is restrained from advertising or offering for sale or distributing in any country whisky which is not Scotch whisky with the description ‘Blended with Scotch whisky’ or ‘Blended Scotch whisky’ or ‘Blended with six-year-old Scotch’ or ‘Blended with six-year-old Vatted Malt Scotch’ or the word ‘Scotch’ or the impugned labels or the impugned carton which bear the mark ‘Gold Tycoon’ containing the word ‘Scotch’ or the description ‘Blended Scotch whisky’ or ‘Blended with six year’.
3. The Tea Board vs. ITC Limited (2016)
The court opined that the usage of the term DARJEELING for a lounge does not create a situation where any person with average intelligence would find it difficult to differentiate between the already existing Darjeeling tea and the lounge DARJEELING. Plus any form of confusion wherein any beverage or food article provided in the lounge might belong to the Tea Board of India is not bound to happen.
Summary
a. The Tea Board of India holds the famous GI “Darjeeling” and the logo of a woman holding tea leaves, as well as the certification trademark “Darjeeling” under the Trade Marks Act, in connection with “tea”.
b. ITC, Limited used “Darjeeling Lounge” as the name for its executive lounge at its Kolkata hotel, the ITC Sonar.
c. The Tea Board had previously filed a suit against ITC for using the word Darjeeling for their lounge. The suit mainly revolved on issues of infringement of the GI and the certification TMs, as well as for passing off and dilution.
d. The matter was rejected by the one judge bench, due to which an appeal was made before the Division bench of the Kolkata high court.
