IP Court affirms the use of Darjeeling on women’s lingerie may dilute the distinctiveness of Darjeeling of Tea Board of India

Taiwan IP Court in May vacated Appeal Board’s decision, ruling that the French women lingerie bearing Darjeeling as a trademark would dilute the distinctiveness of the well-known Darjeeling certification mark of Tea Board of India. Tsai Lee & Chen represents the Tea Board of India in this case.

DARJEELING      v.s.                

                      Tea Board of India                    Delta Lingerie of France    

In 2009 the Taiwan Intellectual Property Office (hereinafter “TIPO”) upheld the trademark opposition against the registration of DARJEELING filed by Delta Lingerie. The Appeal Board later revoked and remanded the TIPO’s decision, believing that Darjeeling certification mark is not a highly well-known mark commonly known by the general public in Taiwan, and that the consumer’s confusion is not likely owing that the markets of the goods/services of the two marks in question are obviously distinguishable and not in competition.  

In dissatisfaction of the administrative decision rendered by the Appeal Board, Tea Board of India filed the Administrative Litigation with the Taiwan IP Court. The Court found the Appeal Board’s reasoning erroneous and affirmed the fame and reputation of Darjeeling mark in the mind of local public. Although the segments in the marketplace are obvious, objectively the use of Darjeeling on women’s lingerie may still disperse or dilute the attractiveness and character of Darjeeling of Tea Board of India as a strong indication to a single source of tea products.

Delta Lingerie, however, had appealed to the Supreme Administrative Court, which is the last remedial resort for this certification mark dispute.