On my Darjeeling: The Tea Board v European Union Intellectual Property Office (EUIPO) (Delta Lingerie intervening)
The European Court of Justice rules that collective trade marks can be assessed in the same way as an individual trade mark.
This case involved a European Union collective trade marks belonging to an association of the Tea Board in India (‘the Association’). The association was established in Darjeeling (a town in West Bengal) in India.
What is a collective trademark?
A collective trade mark is defined as one which distinguishes an entity as being part of an association or cooperation. This mark conveys to the public that this association/ cooperation sells goods or provides services that are from a specific geographical origin, use a specific material, comply with a mode of manufacture or holds some other common characteristic.
In relation to this case, the two collective trade marks involved contained the word “Darjeeling” covering tea, and it was registered under article 66(2) of the Council Regulation (EC) No 207/2009 (now repealed). This provision stated that the Association could file trade marks using the word “Darjeeling”, as the Association was part of an organisation promoting Indian black tea. The collective trade marks identified the geographical origin of the Association’s goods (Darjeeling, West Bengal, India). Another company called Delta Lingerie (a lingerie retailer), later filed for a European Union trade mark using the word “Darjeeling”. The association filed an opposition against Delta Lingerie, stating that the use of the word “Darjeeling” had a likelihood of confusing the public with their goods and services. The oppositions were refused by the European Union Intellectual Property Office, whose decisions were upheld by the Board of Appeal.
In the Tea Board Association’s final appeal to the European Court of Justice, the Court ruled that the “the essential function of an EU collective mark was to distinguish the goods or services of the members of the association which was the proprietor of the trade mark from those of other undertakings, and not to distinguish those goods according to their geographical origin; that, likewise, it had been correct to hold that, in the application of article 8(1)(b) of Regulation No 207/2009, where the signs at issue were collective marks and individual marks, the possibility that the public might believe that the goods and services covered by the signs at issue had the same geographical origin could not constitute a relevant criterion for establishing their identity or similarity.”
The Court rejected the idea that Delta Lingerie’s use of the word “Darjeeling” would provide it with an unfair advantage, as the public would think that the goods originated from Darjeeling.
The above judgment illustrates that in the evermore competitive environment of commercial trade, a common sense approach needs to be taken when identifying what constitutes likelihood of confusion for the public. It reiterates that a collective trade mark will be treated the same as an individual trade mark when being examined; there is no special status given to a word just because it has been used as a collective trade mark.