A French lingerie company, Delta Lingerie, was held to have taken unfair advantage of the reputation of Darjeeling tea by using the word ‘Darjeeling’ on its line of women lingerie, even though the case involved dissimilar goods and services.
Delta Lingerie sought to register the sign comprising the word “Darjeeling” in white letters depicted in a light green rectangle, as shown below.
The Tea Board, a body formed under the 1953 Indian Tea Act and empowered to administer the production of tea, filed a notice of opposition to Delta Lingerie’s application to register the mark at issue, relying on its earlier trade marks comprising the term ‘Darjeeling’ for tea (Class 30). The Tea Board claimed that there was a likelihood of confusion and a risk of unfair advantage between Delta Lingerie’s mark and its earlier trade marks (as shown below).
Unsurprisingly, the European General Court (the “Court”) ruled that there was no likelihood of confusion, emphasizing that, even if the earlier trade marks have acquired a high degree of distinctiveness, that fact cannot compensate for the total lack of similarity between the goods and services at issue.
Despite the lack of likelihood of confusion between the two marks, what is interesting is the Court’s analysis that the mark at issue can potentially ride on the coat-tails of the earlier mark which have a reputation of “exceptional strength”. The Court further stated that the mark at issue is capable of benefitting from the positive qualities conveyed by the earlier trade marks and, more specifically, the image of sophistication or exotic sensuality conveyed by the word element ‘darjeeling’, even though the present case involved dissimilar goods. As such, there exists a risk of unfair advantage in respect of the goods in Class 25 (lingerie) covered by Delta Lingerie’s mark. Therefore, the Court allowed the Tea Board’s opposition in respect of the goods in class 25 and disallowed Delta Lingerie’s application to register the mark at issue for use on its line of women lingerie.