Darjeeling CTM dispute brewing at OHIM

The European General Court has called for a review of whether a geographical indication (GI) for the Darjeeling range of tea has a strong enough reputation to knock out a Community trademark (CTM) application for the term covering lingerie.

On Friday, October 2, the court partially upheld a 2013 decision by the Office for Harmonization in the Internal Market (OHIM) to reject an opposition filed by India-based The Tea Board against four CTM applications filed by France-based Delta Lingerie.

Delta’s applications covered lingerie, retail services and telecommunications.

Despite upholding OHIM’s rejection of The Tea Board’s opposition to retail services and telecoms the court said that ‘Darjeeling’, when used in connection with lingerie, “evokes images of exoticism, sensuality and mystery, which are connected, in the mind of the relevant public, with the representation of the Orient”.

Because of these connotations the court said a “risk of unfair advantage cannot be ruled out” for the CTM covering lingerie products.

The court ordered OHIM to review the strength of The Tea Board’s GI and whether it is likely that Delta would be able to trade on the goodwill established in consumers’ minds.

Axel Nordemann, partner at law firm Boehmert & Boehmert and representing The Tea Board, told WIPR that the Indian organisation is "pleased" with the court's decision to annul OHIM's decision on lingerie.

He said the decision "clearly recognises that the marking of clothing" with the 'Darjeeling' term is "capable of taking unfair advantage of 'Darjeeling' being a famous collective mark and geographical indication".

Philippe Martini-Berthon, attorney at law at law firm Marchais & Associes, said it was pleased by the court's confirmation that CTMs function is to identify the proprietor of the product and not its geographical location.