INTRODUCTION
In Europe, in June 2018, the Scotch Whisky Association (SWA) took legal action before Hamburg’s Regional Court, complaining of a German distiller’s use of “GLEN BUCHENBACH” on its label in respect of a German product. The Hamburg Court sought guidance from the European Court of Justice (ECJ) to interpret the GI law. The ECJ held that it was essential for the word “GLEN” to conjure up more than association with Scotland – it must make consumers think of Scotch Whisky specifically. Following this guidance from the ECJ, in February 2019, the Hamburg Court held that the use of the word “GLEN” on a German Whiskey could be misleading for consumers. Following this victory for SWA, there has been a great level of debate within European GI lawyers and other stakeholders as to the extent to which use of evocative terms is permissible for protection of GI rights.
The focus of this article is to show that, much before the ECJ’s decision in Europe, the Indian Courts have been dealing with similar challenges for decades in aid of common law rights in geographical indications. The article attempts to highlight some of these cases.
1. In India, geographical indications are protected under the following statutes:
(i) Certification Mark under the provisions of the Trade Marks Act, 1999 (the TM Act, 1999) which came into force on September 15, 2003 as a successor Act to the Trade & Merchandise Marks Act, 1958. The new Act carries forward the Certification Mark provisions of the predecessor Act with the only modification that these now extend to services as well. The current definition reads as under:
“Certification trade mark” means a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registrable as such…..
[the underlined parts correspond to the extension to “services”]
(ii) Registration under a sui-generis legislation, “the Geographical Indications of Goods (Registration & Protection) Act, 1999 (hereinafter, “the GI Act”) which also came into effect on September 15, 2003. The GI Act is primarily based on the mandate of the TRIPs Agreement relating to “geographical indications” [Articles 22-24, Section 3]. The Act lays down an elaborate machinery for registration and enforcement of geographical indications – both geographical and non-geographical/traditional names. The definition of “geographical indication” is broad enough to include agricultural goods, natural or manufactured goods, or any goods of handicraft or of industry, foodstuff originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in 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 “indication” is again broadly 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 is applied.”
Ever since its implementation on September 15, 2003, over 360 geographical indications, most of which being Indian GIs, have been registered under the law. The goods covered under the registrations vary from agricultural goods, handicrafts, foodstuffs and manufactured goods. The most prominent among the Indian GIs are BASMATI rice (a non-geographical customary name), Darjeeling/Neelgiri/Assam teas. The most prominent among foreign GIs registered under the GI Act include “Scotch Whisky”, “Irish Whisky”, “Parma Ham”, “Grana Padano”, “Cognac”, “Champagne”, “Prosecco” etc.
2. While registration under the Trade Marks/GI Act affords a most effective protection to a GI, even an unregistered GI claimant, whether Indian or foreign, is entitled to protect and enforce unregistered GI rights in India by invoking the common-law remedy of passing-off. The said remedy is preserved under both the statutes in identical terms as follows:
“Nothing in this Act shall be deemed to affect rights of action against a person for passing-off goods as the goods of another or the remedies in respect thereof.”
Traditionally, the Courts in the UK [from which India’s law and jurisprudence are largely derived owing to historical reasons] understood and applied the common law remedy of passing off to restrain dishonest and wrongful conduct of defendants accused of using proprietary names, symbols or other indicia of plaintiffs. The remedy was generally understood to belong to the domain of private rights and intended to protect the commercial reputation and goodwill of private traders. It was never considered that this remedy could be applied in the domain of public rights such as geographical indications. It is now settled law in common law jurisprudence that a definable group or class of producers has a collective right in the use of their geographical provenance as a protectable form of intellectual property, provided the products owe their collective reputation and goodwill to such origin. Looked at from this perspective, the right to use the geographical name does not belong to one single individual or company but is available to all legitimate producers and traders of the products concerned. The seminal authority in the field is the Spanish Champagne case decided in 1961 by the Chancery Division. The principles laid down in this judgment have came to be known as “extending passing-off” principles and have since driven the evolution of this branch of law not only in the UK but also other common law countries such as Australia, New Zealand and India.
3. UK Cases
J. Bollinger and Others v. The Costa Brava Wine Company Limited [1960 RPC 16]
Facts
The Plaintiffs were twelve French companies who were producers of Champagne wines from the Champagne District of France and supplied such wine to England and Wales. They also had authorization to bring the action by a resolution of 46 growers and shippers in the Champagne District. Their products included 3,233,653 bottles of Champagne out of a total of 3,234,594 bottles imported into England and Wales in 1958.
The Champagne vineyards are found about 100 miles east of Paris around Rheims and Epernay, where there is chalky, flinty soil and the climate is subject to extreme variations of heat and cold. Champagne wines are said to acquire their special qualities from these factors.
Since the year 1927, the Champagne Viticole District (where the vineyards that produced the grapes used for making Champagne are located) has been strictly limited by law. Not all vineyards are allowed to use the term ‘Champagne’ for the wines produced by them. Champagne, a sparkling wine, is produced in the Champagne district by a process of double fermentation and requires a considerable amount of care.
The defendant, an English company, was importing and offering for sale in England a wine under the name ‘Spanish Champagne’, allegedly possessing the characteristics of the Champagne grown and produced in France, but produced in Spain, and had no connection with the Champagne District or even with France.
One of the defenses raised by the defendants was that their alleged acts, even if held to be acts of unlawful competition, the same was not relevant to any cause of action known to English law. The court considered the point of law involved in this defense an important issue before proceeding with the action for the reason that if it was decided entirely against the plaintiffs, it would bring the entire action to an end. In fact, it was admitted by the plaintiffs that the action was not a passing off action in the sense that there was any allegation that the defendant’s product was passed off as wine produced by any of the plaintiffs individually.
Issues that arose for consideration
The preliminary issue that arose for consideration was whether the plaintiffs had a claim in law. After considering a number of American and English cases on the subject, cited by the plaintiffs in support of their main claim, the Chancery Division of the High Court held as follows:
“There seems to be no reason why such license should be given to a person, competing in trade, who seeks to attach to his product a name or description with which it has no natural association, so as to make use of the reputation and goodwill which has been gained by a product genuinely indicated by the name or description. In my view, it ought not to matter that the persons truly entitled to describe their goods by the name and description are a class producing goods in a certain locality, and not merely one individual. The description is part of their goodwill and a right of property. I do not believe that the law of passing off, which arose to prevent unfair trading, is so limited in scope. In my view, the decision in the Pillsbury Washburn Flour Mills case is good sense, and I find nothing in the English cases which is at all inconsistent with the reasoning of the American court, except possibly some of the remarks of Buckley J in Whitstable, Oyster Fishing Co. v. Hayling Fisheries Limited, which, I think, related to the particular circumstances of the trade in oysters in those cases.
I think that the law should and does provide a remedy for the type of unfair competition which is set out in paragraph (a) of the points of law; but I wish to emphasise again that this conclusion is based upon the assumptions of fact which I am required to make for the purpose of the present hearing, and I must not be taken to have accepted in any other way the allegations that what the defendants have been doing causes or is likely to cause any confusion with the wine produced in the Champagne District of France.”
(emphasis supplied)
Following the Spanish Champagne case in the UK, various courts in the commonwealth jurisdictions have applied the principles of “extended” passing-off laid down therein to deal with and restrain misappropriation of geographical indications involved in these cases (1).
4. Indian cases
There have been several decisions by the various High Courts as well as the Trademarks Office in India, refusing to register trademarks containing geographical indications as well as trademarks suggestive of famous geographical indications and thereby upholding the rights in geographical indications. Interestingly, most of these pertain to the protection of the geographical indication ‘Scotch Whisky’. These cases span more than 3 decades of sustained enforcement going back to 1980 and involving passing-off principles preserved under the old and the new TM Acts.
4.1 Some of the High Court judgments under the old TM Act of 1958 are described as follows:
(i) Dyer Meakin Breweries v. Scotch Whisky Association (AIR 1980 Del 125)
This case assumes significance in Indian jurisprudence because it is the first case where the ratio of the Spanish Champagne case was relied on by SWA in asserting its rights before an Indian court.
Facts
The genesis of this case was an application filed by an Indian company, Dyer Meakin Breweries to register the mark ‘Highland Chief’ in respect of a product described as ‘malted whisky’. The trademark also contained the device of the head and shoulders of a Scottish gentleman wearing feather bonnet and plaid and a tartan edging. “Highland” is the region in Scotland most famous for Scotch whisky.
The said application was opposed by SWA – a non-trading body consisting of producers and sellers of Scotch Whisky and established with the principal aim to protect the interests of these producers and sellers in the name Scotch Whisky.
Claims and counter claims
It was contended by SWA that the description ‘Scotch Whisky’ was not generic but related solely to the geographical origin of the product and meant whisky distilled in Scotland. Further, the words ‘Highland Chief’, when used in relation to malted whisky, would be assumed by purchasers to relate to a product of Scotland since the Highlands of Scotland are an area world famous for the production of whisky. It was also stated that the impression created by the words “Highland Chief” was further reinforced as the label bore prominently the device of the head and shoulders of a gentleman dressed in Scottish Highland costume wearing, inter alia, feather bonnet and plaid edged with tartan, a well known symbol of Scottish origin. It was submitted that the mark in question was likely to deceive or cause confusion as to origin and source.
In its defense, Dyer Meakin Breweries conceded that the expression ‘Scotch Whisky’ meant whisky distilled in Scotland and that it could only be used in relation to a product wholly distilled in Scotland. It argued, however, that the label bore the name and place of manufacture and bottling in bold letters and set forth that it was indeed a product of India and, therefore, there could not be any confusion and deception.
Ratio and findings
The Assistant Registrar of Trademarks rejected the opposition on the ground that there was no evidence to indicate that the purchasing public in India associated the words “Highland Chief” with whisky produced in Scotland. However, SWA’s appeal against the decision before the Single Judge of the High Court of Delhi was accepted and the application filed by Dyer Meakin was dismissed. Dyer Meakin appealed, in an intra-court appeal, to the Division Bench of the High Court of Delhi – a bench of two judges.
By a detailed order, the Division Bench upheld the order of the Single Judge and held that:
“It would thus follow inferentially that the words ‘Highland Chief’ by themselves or because of the presence of pictorial representation of the Highlander on being used as a trademark in respect of the applicant’s whisky, which admittedly is not Scotch Whisky, would be likely to deceive or confuse unwary purchasers in thinking that the whisky is Scotch whisky.” (p.130)
The Division Bench further went on to hold the use of Highland Chief as a case of false trade description within the meaning of the Indian Trade and Merchandise Marks Act, 1958. Under the Act, “false trade description” means, inter alia, a trade description which is untrue or misleading in a material respect as regards the goods to which it is applied. The expression “trade description” is further defined to mean description as to the place or country in which any goods are made or produced. The device being a well-known symbol of Scottish origin would enhance the impression made by the words ‘Highland Chief’ as having some nexus with Scotch Whisky produced in Scotland. Highlanders being Scottish soldiers are well-known in history and literature and highlands are well-known as the best region of Scotland producing Scotch whisky. It was held that the trademark would, therefore, be a false trade description disentitled to protection under the Act.
(ii) Scotch Whisky Association & Another v. Mohan Meakin Ltd. [an unreported judgment of Bombay High Court delivered on November 19, 1986]
The defendant, an Indian company, applied on September 3, 1974 for registration of the label mark ‘ROYAL SCOT” in respect of whisky manufactured by it. After the application was published for opposition, SWA opposed the same on the primary ground that the proposed mark was likely to deceive and cause confusion as the word “SCOT” used by the defendant was suggestive that the defendant’s whisky emanated from Scotland and was a Scotch Whisky.
The said opposition was allowed by the Deputy Registrar of Trade Marks.
Despite the success in the opposition proceedings, SWA subsequently became aware that the defendant had carried on using the impugned trade mark “ROYAL SCOT” on its whisky manufactured in India and thus deliberately misleading the traders and members of the public into believing that the whisky marketed by it was Scotch Whisky and thus passing-off the same as Scotch Whisky.
SWA sued the defendant before Bombay High Court, claiming passing-off and seeking injunction against the defendant. In defense, the defendant claimed that the word “SCOT’ was being commonly used in India by various Indian manufacturers as a brand name for sale of Indian whisky and thus it was not suggestive of Scotch Whisky and it would not cause any deception or confusion among members of the trade and the public in India.
By agreement between the parties, the High Court proceeded to dispose of the entire suit. Agreeing with SWA’s claim in passing-off, the High Court, inter-alia, held:
“Even assuming that some of the Indian whiskies are marketed in the Indian market with the brand name ‘SCOT”, it is obvious that the manufacturers are trying to secure undue advantage having realized that the words “SCOT”, “SCOTS” and “SCOTTISH” have acquired world-wide reputation and the traders and public at large identified these words with Scotch Whisky distilled and manufactured only in Scotland.”
“It is also interesting in this connection to state that the defendants did not offer any explanation as to how the word “SCOT” was invented by them while marketing their Indian whisky. The learned counsel appearing on behalf of the defendants, when confronted with this query, has no answer to give, except suggesting that it was suggested as “Fancy English word”. In my judgment, the explanation is devoid of any merit….”
“…In my judgment, applying the test of a prudent and reasonable man and taking into consideration the circumstances prevailing in this country and the fact that the whisky is consumed by large number of people, it can be safely concluded that there is every likelihood of deception or confusion in the mind of the public by the defendants’ marketing the whiskies by using the label containing the word “SCOT” and by stating that is whisky blended & bottled.
(emphasis supplied)
(iii) Scotch Whisky Association & Another v. Forbes Campbell & Co. Ltd. [an unreported judgment dated April 11, 1989 – Bombay High Court]
The defendant in the case, an Indian company, was using the trademark “GLEN FORBES” in respect of an Indian whisky manufactured by it. Upon becoming aware of such use, SWA sued the defendant, complaining of passing-off. The main plank of the passing-off claim rested on the following grounds:
- many members of SWA including the second plaintiff use the word “GLEN” as part of their trademarks;
- the word “GLEN” means “narrow valley” in Gaelic, the traditional Scottish language;
- there are many Glens in Scotland and many Scottish place names incorporate the word “GLEN”;
- It is the Glens of Scotland where most Scotch Whisky distilleries are found and many of these distilleries are named after the Glens in which they lie.
Based on the above averments, SWA complained that the defendant’s adoption and use of “GLEN FORBES” was evocative of Scotland and, when used in respect of an Indian whisky, constitute passing-off, more so since it was described as “blended with Finest Scotch Whisky”.
Agreeing with SWA’s claims, the High Court of Bombay injuncted the defendant from using the impugned mark “GLEN FORBES”, holding that:
“There can be hardly any dispute that the Scotch Whisky has acquired world-wide reputation and it has been repeatedly held that the whisky which is not a Scotch Whisky can not be sold under the brands or labels or devices indicating that it is a Scotch Whisky. It is not in dispute that the word “GLEN” which means “narrow valley” is found in Oxford Dictionary. Several distilleries are named after the Glen in which they lie……Shri Chagla was unable to indicate as to how the defendants struck upon the word, but submitted that the word “GLEN” is found in any English dictionary and there cannot be any objection to the defendants using the same. The submissions can not be acceded to because, though the word “GLEN” is found in the dictionary, when used in respect of whiskies, the public and trade would connect it with “Scotch Whisky……”
(emphasis supplied)
(iv) Scotch Whisky Association & Another v. Parvara Sahakar Shakar Karkhana Ltd. (AIR 1992 Bom. 295)
Facts and claims
It was a passing off action initiated by the Scotch Whisky Association along with a producer of Scotch whisky against the defendants for a declaration that their use of the device of the Scottish Drummer wearing a kilt or the tartan band or the word ‘Scotch’ coupled with the description ‘Blended with Scotch’ on their Indian whisky sold under the marks “Drum Beater” and “Gold Tycoon” would amount to passing off its whisky as Scotch whisky, thereby misleading other traders and customers and damaging the reputation and goodwill of Scotch Whisky.
The High Court of Bombay first discussed the meaning and import of the expression ‘Blended with Scotch’ as it was directly relevant for the purposes of considering the reliefs claimed. The said expression, as explained in the literature published by the plaintiff as well as in some English judicial decisions, was defined and understood as “a blend of a number of distillates each of which separately is entitled to the description Scotch Whisky”. It was submitted that almost 97% of the Scotch whiskies are marketed as blended Scotch whiskies. Accordingly, the said expression, when used in respect of whiskies which are not Scotch, even if one of them is Scotch would be improper. (emphasis supplied)
The defendants, however, contended that even if they mixed small or negligible percentage of Scotch Whisky as an ingredient along with its Indian whiskies in the blend, the defendant would be justified in describing its products as a “whisky blended with Scotch”.
Ratio and findings
The Court rejected this argument and pointed out that even if it was proved as a fact that the defendant mixed part of Scotch whisky with its Indian whisky, they could not be permitted to market that product as blended Scotch whisky merely by using the word “with” in between as the unwary customer with his average intelligence and imperfect recollection is bound to treat the product as “Blended Scotch whisky”, i.e., whisky of which each of the blends is exclusively Scotch.
After noticing the principles of passing off action and the ratio of the Spanish Champagne case, the High Court held:
“In this case, the twelve plaintiffs who were producers of wine in the Champagne District of France objected to the use by the defendants of the name “Spanish Champagne” for wine produced in Spain. It was admitted in this case on behalf of the plaintiffs that the action was not a passing off action in the sense that there was no allegation that the defendant’s product was passed off as one produced by any of the plaintiffs individually. The Court, however, held that the concept of passing off was not a restricted one and that the plaintiffs had a cause of action to obtain relief to prevent unlawful competition where the goodwill and trade reputation of the persons dealing in a particular product genuinely indicated by a trade description was damaged by the defendants by attaching to their product a name or description with which it had no natural association.
The extended meaning and content of the tort of passing off was explained by the House of Lords … that the action in passing off would be maintainable where the plaintiff could prove injury to its business or goodwill which could take a variety of forms even though the defendant was not passing off its goods as the goods of the plaintiff. It is possible that the defendant partly states the truth in its label or in the description and partly mixes it up with description and devices which are misleading or which are likely to confuse unwary purchaser of the product. In such a case, the defendant cannot escape the liability for its misrepresentation or actionable wrong of passing off i.e., causing injury to the business reputation and goodwill of the plaintiffs merely because while describing its product, the defendant partly states the truth and then mixes up the same with colorable device, marks, words or description with which the product has no natural association.” (p.303-304)
Applying the principles of law laid down in the Spanish Champagne case, and others, the High Court held that the defendants were deliberately and intentionally passing off their product as “Blended Scotch” and restraining them from advertising or offering for sale or selling or distributing as “Scotch Whisky” whisky which was not Scotch Whisky bearing the impugned labels and the mark “Drumbeater” or the words “Scotch” or the device of a Scottish drummer.
(v) The Scotch Whisky Association & Another v. Golden Bottling Ltd. (Delhi High Court decided on April 20, 2006)
It was an action for passing-off filed by SWA to protect its common-law rights in the GI “SCOTCH WHISKY”. The defendant, an Indian Company, was found to be using the impugned name “RED SCOT”. In an ex-parte order passed when the defendant chose not to contest the suit, the judge, noting the mandate of the TRIPs Agreement and the UK law in respect of “SCOTCH WHISKY”, held that:
“Section 20(1) of the Act prohibits any person from instituting any proceeding to prevent or to recover damages for the infringement of an unregistered geographical indication. However, this does not affect the rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof…”
Injuncting the defendant from using the impugned mark “RED SCOT”, the High Court also awarded damages amounting to USD 7000 and costs of USD 4300 against the defendant “in view of the well-settled law….and the necessity of preventing a violation of intellectual property rights of others…”
4.2 The above list of successful passing-off actions taken by SWA in India even before the GI “SCOTCH WHISKY” came to be registered in India in 2009 under the GI Act demonstrates how the Indian Courts have proactively applied the “extended” passing-off remedy developed in England to restrain local manufacturers of Indian whiskies from dishonestly using trademarks/labels evocative of Scotland and Scotch Whisky.
As stated above, the GI Act came to be enacted in India on September 15, 2003. Taking advantage of this, SWA obtained registration of the GI “SCOTCH WHISKY” under the GI Act with effect from January 05, 2009. Subsequently, with effect from April 03, 2012, the Government of India extended an additional level of protection to the GI “SCOTCH WHISKY” under the provisions of the GI Act.
In 2012, armed with statutory rights under the GI Act, SWA filed a quie timet action before the High Court of Bombay against an Indian company’s threatened use of the impugned trademark “SCOSIA IMPERIAL” alongwith the description “Blended Scotch Whisky”. Invoking the common-law and statutory rights in Scotch Whisky, SWA submitted that the word “SCOTIA” is a Latin term for Scotland. SWA also averred that the defendant had initially adopted “SCOTIA” and itself sought a “No Objection Certificate” from SWA. SWA refused the permission sought and requested the defendant to change the label appropriately. Without any further reference to SWA, the defendant started distributing brochures for a product “SCOSIA IMPERIAL” together with the description “Blended Scotch Whisky” and the prominent use of tartan. Agreeing with SWA’s claims, the High Court proceeded to grant its motion for interim injunction, holding:
“Prima facie, the Defendant’s use/intended use of the description “Blended Scotch Whisky”, the word “SCOSIA”, the tartan design, other prominent references to “Scotch Whisky” and expressions such as “Blended with Imported Scotch” and “Blended Scotch with Malt” in respect of whiskies that are not Scotch Whiskies is likely to mislead consumers to believe that the product is a Scotch Whisky when it is not. Such use is also an act of unfair competition including passing-off which infringes/will further infringe the registered geographical indication Scotch Whisky under Section 22(1)(b) of the GI Act and violate the statutory rights conferred upon the Plaintiff pursuant to the provisions of the GI Act and the notification issued by the Central Government under Section 22(2) and (3) of the Act on April 03, 2012.”
5. Besides successfully suing many defendants for unauthorised use of the expression ‘Scotch’ and for use of imageries that evoke Scotland, SWA has also been initiating numerous successful proceedings and actions before the TM Registry against third party attempts to register expressions, descriptions, names, labels, devices, marks, tickets, get-ups or emblems which are evocative of Scotland and which suggest that such whisky is Scotch Whisky. Such marks opposed include words/names/taglines such as London Street, London Pride, London Bridge, Highland’s Pride, Ascot, Barrhead, Lord Calliburn, Scotsman, Mac Millan, British Empire, Scott and Burns, Piccadily Matured Blended Whisky, Royal Mile, Calton Hill, Fitch and McDonald, Agg-herbal Scotch and descriptions, besides the use of, ‘Blended with Scotch Whisky’, ‘Blended Malt and Scotch Whisky’ etc. which are suggestive of ‘Scotch’ or evocative of Scotland.
6. While the protection of geographical indications in India through the common law remedy of passing-off has yielded a wealth of judicial opinion consistent with the jurisprudence elsewhere, the scope of statutory protection under the GI Act is still in an inchoate state. This is illustrated by Tea Board India’s unsuccessful effort to restrain use of “Darjeeling” for lounge services. The High Court of Calcutta which heard the matter on merits disagreed with Tea Board and held that use of “Darjeeling” for lounge services is not a violation of the GI under the GI Act.
Tea Board argued that:
- Darjeeling tea is a very prestigious and iconic heritage product of India.
- Tea Board is a statutory body mandated to protect and preserve all the underlying economic and intellectual property rights in the DARJEELING name and product.
- In published literature and debates around geographical indications (GIs) world-wide, Darjeeling tea is regularly featured as a success story of a very well-protected GI from India.
- Tea Board has been enforcing the valuable IP rights in the Darjeeling name and product around the world to prevent attempted third-party registrations and use of the name DARJEELING for both non-origin teas and diverse goods and services. These efforts have been rewarded with successful judicial orders from around the world.
Dismissing the suit, the High Court held that:
- Tea Board’s claim for infringement under the GI Act was misconceived as the said Act was limited only to goods and did not extend to services;
- Tea Board was not entitled to claim passing-off as it is a non-trading body and the complaint of unfair competition was not available to it;
- In the absence of any complaint of confusion and deception received in respect of the Defendant’s use of “Darjeeling Lounge”, the passing-off claim was untenable.
Tea Board has since challenged the Single Judge’s order and judgment before a Division Bench of the High Court. The primary issues raised by Tea Board before the Division Bench are as follows:
- The GI Act confers on a GI owner a statutory remedy of infringement against all acts of unfair competition [based on Article 10 (bis) of the Paris Convention]. The Defendant’s use and attempted registration of “Darjeeling Lounge” as a trade mark constitutes an act of unfair competition when the lounge is located outside the Darjeeling district and is being used for the provision of foods and alcoholic and non-alcoholic beverages;
- It is immaterial that Tea Board is a non-trading body since all GI owners under the GI Act are non-trading bodies and are thus entitled to complain of unfair competition on behalf of all the stakeholders involved in the supply chain of the product in question;
- Tea Board has a statutory mandate to act as the only representative body in India and globally to protect the right in Darjeeling as a GI including passing-off.
The appeal is likely to be listed for final arguments very shortly. The outcome of this appeal is being keenly watched by all GI owners in India and abroad.
1. (i) Vin Products Ltd. vs. Mackenzie & Company Limited & Others [1969 RPC 1]
The case was brought by certain Sherry producers and shippers in Spain to restrain the use of “British Sherry” by certain importers in the UK. The Court applied the Spanish Champagne “extended passing-off” principles to uphold the rights of the producers in Sherry GI, though on facts it allowed the continued use of “British Sherry”, “Australian Sherry”, “South African Sherry” & “Cyprus Sherry”.
(II) Erven Warnink BV & Anr. Vs. J. Townend & Sons (Hull) Ltd. & Anr. [1980 RPC 31]
This case assumes significance because the House of Lords [as the UK Supreme Court was then known] upheld the principles laid down in the Spanish Champagne case. However, the case did not invoke the rights in any geographical indication but concerned the rights of the Plaintiff in a liqueur made according to a Dutch recipe and name “Advocaat”.
(iii) In Wineworths Groups Ltd. Vs. CIVC [(1992) 2 NZLR] 327.
The High Court and the Court of Appeal in New Zealand rendered concurrent findings against the defendant “Australian Champagne” following the Spanish Champagne case.
(iv) Tattinger SA and Anr. Vs. Allven Ltd. & Anr. [FSR 1993 (64)]
A group of producers of Champagne sued English defendants for passing-off because the latter produced a non-alcoholic drink called “Elderflower Champagne” and sold it in the same kind of outlets as Champagne, in bottles of the same shape, size and colour as Champagne with labels and wired corks similar to those used to pack and seal Champagne. Applying the Spanish Champagne principles, the Court of Appeal in the UK set aside the judgment of the Chancery Division and injuncted the defendants from using the impugned mark, label and other indicia associated with Champagne.
(v) Chocosuisse Union Des Fabricants Suisse de Chocolat Vs. Cadbury Ltd. [1998 RPC 117]
A group of manufacturers of Swiss chocolate together with the industry association, Chocosuisse sued Cadbury Ltd. to seek an injunction against its use of the label mark comprising the trade mark “SWISS CHALET” along with a representation of the snow-capped Matterhorn mountain in Switzerland and a picture of a Chalet in a valley below it. Both the Chancery Division and the Court of Appeal gave concurrent findings against Cadbury following the principles laid down in the Spanish Champagne line of cases and granted the reliefs sought.
