Trademark

India’s Geographic Indication, Darjeeling, Won Its Case at the TIPO

DARJEELING

v.s.

The Taiwan Intellectual Property Office (TIPO) on November 18, 2009 upheld Tea Board of India’s opposition to the mark DARJEELING in respect of “shirts, short pants, dresses, woman underwear, belts and stovepipe pants, bras, slips, suspenders, jackets, socks, tights, underwear for daily use, underwear for night use, men’s socks, trousers, hoses, pantyhose, ankle socks, pajamas, underwear,” etc. in Class 25 filed by Delta Lingerie of France. The opposition, since it was filed in 2004, has been pending with the TIPO for 5 years.

DARJEELING word mark and its logo mark are protected Geographic Indications in India. They are protected in many other countries around the world in the form of trademark, service mark, or certification mark. At the time when the opposition was filed in Taiwan, neither of the two marks was registered with the TIPO. As such, the essential ground for opposition was the protection of well-known trademark and doctrine of trademark dilution.

Counter-statements filed by Delta Lingerie argued that TRIPS Agreement merely protects Geographic Indication for wine and spirits, which did not extend the protection to agricultural products, that DARJEELING was not conventionally well known among the local public, and that DARJEELING has become generic through improper use.

Without emphasis on the position for the protection of Geographic Indication, the TIPO in its decision recognizes that DARJEELING is a world renowned mark in respect of tea and deems that the registration of Delta Lingerie’s mark will dilute the distinctiveness of DARJEELING mark. The TIPO stated in its decision that, “Although the market segmentation is obvious between women underwear and tea, and there is no conflicting interest between two parties to cause confusions among the relevant consumers, however, the registration of the opposed trademark might still diminish the strong distinctiveness of the opposing trademark and disperse its attraction to consumers. The association with a single source and the unique impression that the opposing trademark lodges in public mind might also be destroyed by the use of “DARJEELING” mark on different goods.”

Delta Lingerie has filed an appeal against the TIPO’s decision. Therefore, the development of this case is still worthy to watch. India Tea Board’s DARJEELING word mark and its logo mark are later registered as certification marks in Taiwan for tea originated from Darjeeling region and certified by Tea Board of India.