Another look at the interface between brands and geographical designations
We like nothing better than a refreshing cuppa – a punchy Lapsang Souchong to kick the day off, some fine single-estate Darjeeling in the afternoon, and maybe a decaffeinated Ceylon before bed. Never in our wildest dreams would we confuse a cup of the good stuff with racy lingerie, and it appears we may not be alone in that regard. The CJEU, the European Union’s top court, has handed down its decision in a trade mark dispute that, to be entirely honest, we had forgotten was still rumbling. It’s all to do with whether Delta Lingerie can register the word DARJEELING as a trade mark for its range of undies.
Hostilities broke out back in 2011 when The Tea Board of India unsuccessfully opposed various EU trade mark applications by Delta, relying on its own earlier registered marks and the fact that DARJEELING is a registered PGI (protected geographical indication) for tea. The Tea Board’s marks were not your common or garden ‘trade marks’ but ‘collective marks’ – an altogether rarer beast. Collective marks are a type of registered mark open for use by any members of a specific organisation (in this case, official Darjeeling tea producers). They should not be confused with their close cousins, the even rarer ‘certification marks’ (such as some registrations of the WOOLMARK) which are open to anyone whose goods or services meet certain published criteria.
Undaunted, the Tea Board appealed its way through various levels of the EUIPO, losing each time until by 2015 it had reached the General Court (the lower EU Court) which wisely decided that tea was not similar to underwear, and that the essential function of both a trade mark and a PGI was to distinguish goods or services by reference to producer rather than geographical origin. However, since the GC also opined that Delta might be gaining an unfair advantage from association with the positive qualities of the Tea Board’s marks (their ‘sophistication’ and ‘exoticism’), it managed to upset both parties equally and so each of them appealed one last time.
Finally, the CJEU heard and dismissed both appeals and, in a judicial equivalent of sending both parties to their rooms to think about their behaviour, ordered them to each pay their own costs. The CJEU held that there was no contradiction in the GC’s ruling that consumers would not assume Delta’s goods came from Darjeeling but might nevertheless still be attracted by the positive connotations of that region.
Much of the legal argument turned on whether collective marks are subject to the same rules as ordinary trade marks – turns out, the answer is ‘yes’. Furthermore, when trying to demonstrate the reputation of your mark, you can’t assume a tribunal will take matters for granted but should be prepared to provide substantial amounts of supporting evidence and remember that depth is as important as breadth. This is a bit of a set back for the Tea Board which has previously chalked up a number of victories against Delta (e.g. in Taiwan) as well as Bvlgari and others. But ironically it lost a case in Calcutta to force a deluxe hotel to rename its ‘Darjeeling Lounge’ – the court found that the Darjeeling Lounge had been open for 2 years before Darjeeling gained protection as a Geographical Indication.