GEOGRAPHICAL INDICATIONS:
MORE THAN A MARKETING TOOL
PART – I
A PRESENTATION BY
RAJENDRA KUMAR
PARTNER
K&S PARTNERS, NEW DELHI
APRIL 6, 2010
Lets first talk about concepts and
forms of Intellectual Property
Common Misconceptions or Wrong
Descriptions

Many times we read and hear:
– Patent this brand
– Copyright this Idea
– This patent gives Ricetec exclusive right to use the
name “Basmati”
– Neem has been patented
– Government of India to protect Basmati and
Darjeeling trademarks
– All these reveal confusion about IP rights
FORMS OF IPR
Trade Secrets
Trademarks
or Brands
Patents
IPR
Designs
Geographical
Indication
Copyright
Plant Varieties
Act
What are Patents

Patent –
– An industrially useful invention
– Which is new and not part of the public domain
– Confers upon the patentee monopoly in the use of
the invention for a fixed period
– Protects the workable idea and the concept of an
industrially useful invention
What Does “Copyright” Mean

Copyright– Protects the expression of an idea rather than the
idea itself
– Gives to a copyright owner excusive right to a
bundle of rights in the protected work to the
exclusion of all others
What are Industrial Designs

Design– Protects the external aesthetic / ornamental
appearance or characteristics of a product
– Judged solely by the eye of the observer
What are Trademarks

Trademark– Is a word / device / sign / symbol / combinations
thereof and is capable of graphical representation
– Indicates the origin of goods or services and
distinguishes these from those of others
Coca Cola
 Microsoft

Pepsi
Dabur
Godrej
Colgate
TRADEMARKS
SAMSUNG, SONY, HONDA,
HYUNDAI, HAIER
What are Geographical
Indications

Geographical Indications
– This is a collective right as opposed to a private
right
– Identifies the product as originating in a country or
region thereof
– Whose quality, reputation or other characteristics
are attributable to its geographical origin
BASMATI, DARJEELING TEA, CHAMPAGNE,
SCOTCH
WHISKY,
HAVANA
CIGARS,
ALPHONSO MANGOES
TYPES OF GIs

GEOGRAPHICAL INDICATION
 Product name indicates the origin
 SCOTCH whisky
 DARJEELING tea
 HAVANA cigars,
 Product is traditionally associated with a particular region
 ALPHONSO
 FENI
 BASMATI
STRATEGIC USE OF TRADEMARKS

Macro economic function- identifies
product

Accountability to customers

Strategic marketing role in individual
enterprises

Consumer advertising to promote product
sale

Cements consumer loyalty
STRATEGIC USE OF TRADEMARKS

Trademarks help owners to:
Increase profitability

Respond to unfair competition

Expand and maintain market share

Differentiate products

Introduce new product lines

Gain royalties through licensing programs

Support strategic partnership & marketing
alliances

Justify corporate valuation in financial transactions
VECTORS OF NATIONAL IDENTITY
 Countries
 Coca
Cola, Marlboro, Nike
 Ferrari,

evoked by:-
Gucci, Benetton

Chanel, Dior

Sony, Honda
Trademarks convey positive commercial
appeal about country of origin
CASE STUDIES
 JAPAN
 Post
world war II- “Made in Japan”
 SONY
– Latin Name - Chosen in 1954

Today Japan known for high quality
electronic goods

One of the per capita richest
countries
CASE STUDIES
 KOREA
 1960s
- low GNP country
 Today
eleventh largest economy in the
world

Major brand exporting country
 SAMSUNG,
HYUNDAI – technical
competence, manufacturing
excellence, modernity
WHAT MADE THEM SUCCEED?

Small countries - export-led economic
development

Developing domestic expertise –
controlled external trade

State supported industrial development

State supported export of branded
domestic products

Quality recognised as a benchmark
STRATEGIC USE OF
GEOGRAPHICAL
INDICATIONS
Like any other IPR, a GI can also be
economically exploited
Provides benefit to all stake holders
Contributes to human and social
development of community
Can be used as a means to protect some
traditional knowledge and traditional
cultural expressions (Madhubani paintings,
Aranmula metal mirror & other products of
handicrafts)
STRATEGIC USE OF
GEOGRAPHICAL INDICATIONS
Helps in preventing migration of the art /
craft out of the region by keeping the
artisans rooted in the region
Acts as an ambassador of tourism for the
GI region (E.g., Champagne tours, Scotch
Whisky trails, Napa Valley Wine tours)
STRATEGIC USE OF
GEOGRAPHICAL INDICATIONS

PROTECTION OF GIs IMPORTANT:
Promotes products having certain
characteristics of considerable benefit to
the rural economy
Ensures the supply chain integrity of GI
products
Facilitates distribution and sale of GI
products – especially relevant to developing
countries whose markets are in
industrialized countries
STRATEGIC USE OF
GEOGRAPHICAL INDICATIONS

PROTECTION OF GIs IMPORTANT:
Improves the income of farmers and
retains the rural population in less favoured
remote areas
Protects consumers against acts of unfair
competition by ensuing correct labeling
information
Acts as a vehicle for producers to compete
on quality rather than quantity
STRATEGIC USE OF
GEOGRAPHICAL INDICATIONS

Studies in Europe have shown enhanced
economic benefits for origin guaranteed
products
 French GI cheeses: a premium of 2 Euro
 Italian Toscano oil : a premium of 20%
 French Poulet de Bresse : a premium of 4%
 Producers of milk for ‘Comte’ cheese: a
premium of 10%

These products are sold at a premium today
both in the domestic and international
markets
How do we unlock the wealth?

Legal:
Need for protection of GI at domestic and
international levels
Need for integrity and sanctity of supply
chain through certification at source
Need for pro-active and defensive steps to
prevent usurpation of GIs
Colombian Coffee Case Study

Colombian coffee
– Coffee produced in Colombia
– Rich taste and aroma
– Handpicked berries
– Soaked in cold mountain water for 24 hours
– Carefully washed in long concrete troughs
– Dried on great open terraces
Colombian Coffee Case Study

Colombian Coffee Federation (NFC)
– Owned & controlled by over 50,000 Columbia’s
coffee farmers
– Markets & advertises to promote Colombian
Coffee around the world by way of the Juan
Valdez logo
– Lays down rigorous quality control standards
– Certifies 100% Colombian Coffee with no other
origins blended in
Colombian Coffee Case Study
Colombian Coffee Case Study

Advertising history
– Early 60’s -to 80’s Initial Educational Campaign
to create awareness of Colombian Coffee’s
superiority
– Early 80’s - Image Campaign - to create a
positive image of Colombian Coffee
– The 100% Colombian Coffee Campaign- The
Juan Valdez logo developed in March 1981
– The right to use the logo is strictly enforced as to
the manner and form of use
Colombian Coffee Case Study
– Juan Valdez (the quintessential cafetero/
coffee farmer), his mule and the
Colombian mountains in the background
– Serves as a seal of 100% guaranteed
Colombian Coffee as approved by NFC
– Logo was introduced to print & consumer
spot television advertising
– 1983 - the logo was included in all creative
material on a national basis
Colombian Coffee Case Study
– 1990’s - The Grab Life by the Beans
Campaign to reflect the Espresso Bar
culture of young coffee drinkers
– Currently all three campaigns run
simultaneously to compliment and
enhance the brand equity of Colombian
Coffee
Colombian Coffee Case Study

How has the protection benefited
the poor cafetero?
– Standard of living of more than 4 million
(around 15% of the total population)
Colombians improved
– Thousands of miles of access roads built
to the production area
Colombian Coffee Case Study
– Safe and adequate water supply and
electricity
– Schools for the cafeteros’ children
– Health centers
– Overall improved living conditions
– Today, Colombia’s 300,000 small
independent coffee growers are no longer
alone in the vast world of international
trade
Colombian Coffee Case Study
– And Colombia is now getting known for
its coffee tourism!
– Since the early 1990s, coffee farms are
being opened to visitors for a fee.
– Guided tours laced with activities such as
coffee roasting, coffee cupping etc.
Phu Quoc Fish Sauce
A case study from Vietnam
– Fermented fish sauces considered a
delicacy in many East Asian countries
– Nuoc Mam from Vietnam’s largest island
called Phu Quoc considered among most
famous
– Phu Quoc in the Gulf of Thailand
surrounded by waters rich in silvery,
translucent, long-jawed anchovies
– Traditional recipe is secretly guarded by
the Phu Quoc Islanders
Phu Quoc Fish Sauce
A case study from Vietnam
– However, the process lasting almost one
year essentially involves: catching, layering
and salting anchovies, decomposing them
in special wooden casks that are said to
flavour the sauce
– Island of Phu Quoc has about 90 fish
sauce enterprises – collectively producing
10 million liters of sauce each year
– EU alone a major buyer of around one
million liter
Phu Quoc Fish Sauce
A case study from Vietnam
– Appellation of origin under Regulation
510/206 sought
– Ever since implementation of
a
geographical indication scheme in 2001:
Prices in the home market increased from 0.5
to 1.5 Euro per liter
 Attracted Unilever under a ten-year contract to
team up with local fish sauce producers in Phu
Quoc for upgradation of processing and
bottling plant to international hygiene
standards

Phu Quoc Fish Sauce
A case study from Vietnam

Resulting in a world class product under Unilever’s
Knorr Trademark along with Phu Quoc as a mark of
origin
– Unilever committed to contribute to secondary
ventures:


Building a museum of fish sauce on the island
Research by scientists in anchovies to suggest patterns
of sustainable harvest of these tiny fish
– The Phu Quoc example is a precedent for
developing countries to exploit/ preserve their
undermarketed traditional products sold under
GIs
END OF PART - I
GEOGRAPHICAL INDICATIONS:
MORE THAN A MARKETING TOOL
PART –II
Indian Experience
Indian Experience
– GIs protected in India through:
Certification Trademarks under the Trade
Marks Act, 1999 (and the erstwhile repealed
Trade Marks Act of 1958)
 Sui Generis GI law
 Passing-off actions

Statutory protection in India common elements
– Collective body with locus standi
– Specification / characteristics of the
product
– Whether geographical or traditional name
– Type of goods
– Proof of origin – historical records
– Method of production
– Inspection body
– Geographical area of production and map
Some important provisions of the GI law
– Section 2(1) (e): defines a ‘geographical
indication’ in very broad terms on the TRIPS 22.1
definition and includes agricultural goods, natural
goods or manufactured goods
– Traditional cultural expressions (TCEs) in the
field of food stuffs, products of handicraft or
traditional textiles registrable subject matter
Some important provisions of the GI
law
– Section 11(1): An applicant can be:
any association of persons or producers or
 authority established by or under any law for
the time being in force representing the
interest of the producers of the concerned
goods

Civil and criminal remedies
– Both civil and criminal remedies are
available to the rights holder
– In a civil action the rights holder may
maintain an infringement action based on
a registered GI and a passing-off action
based on common law rights
– The law classifies offenses as cognizable
with powers of search and seizure vested
in the police both directly and under a
warrant issued by a magistrate
An Indian Success Story
DARJEELING
TEA
THE DARJEELING TEA
STORY
Darjeeling tea goes back to 1835
Statutorily controlled by the Government as part
of the Tea industry from 1933 under various
enactments culminating in the Tea Act, 1953
The Tea Board is vested with the authority to
administer all stages of tea cultivation,
processing & sale through various orders
Cultivated currently in 87 designated gardens
in the Darjeeling district spread over 17800
hectares of land
THE DARJEELING TEA
STORY

The Darjeeling tea industry
 Employing over 52000 people on permanent basis
 Additional 15000 persons engaged during plucking season – March
to November
 60% of the work force is women employed on family basis
 Income of a garden worker half in the form of cash and the other
half by way of perquisites with access to free accommodation,
subsidies cereal ration and free medical benefits
 As against the world tea production of 3750 million kgs for the year
2009, India’s tea production accounted for 981 million kgs
 Darjeeling tea accounted for 9.5 million kgs
THE DARJEELING TEA
STORY

Protection of Darjeeling tea:
Beneficial for the plantation worker
Would ensure better prices
Better economic health of the industry
Sustainable educational and health systems
A better quality of life
WELFARE ACTIVITIES BY
TEA BOARD



Grant of educational stipend to wards of
plantation workers
Grant of financial assistance for construction
/ expansion of school and college buildings
Capital grants for setting up sports facilities in
tea plantation districts
THE DARJEELING TEA STORY
LEGAL PROTECTION
 1997 -
Benelux Countries (Belgium,
Netherlands, Luxembourg) – Collective
mark protection for DARJEELING logo
 1998 – World Wide Watch agency CompuMark
(now called Thompson) appointed to monitor
conflicting marks.
Pursuant to the watch agency being appointed:


Instances of attempted registrations found
Some challenged through oppositions & cancellations and
sometimes negotiations.
THE DARJEELING TEA STORY
LEGAL PROTECTION
1998 – UK - Certification mark protection for
DARJEELING word
2002 - USA – Certification mark protection for
DARJEELING word
2003 – Russia – Trade mark registration for
DARJEELING word
2003 - India - GI application filed for
DARJEELING word & logo marks, since
registered in July 2004
THE DARJEELING TEA STORY
LEGAL PROTECTION
2004 - India – Copyright registration obtained for
DARJEELING logo
2004 - Japan – Collective mark application filed
for DARJEELING word
2004 - Australia – Certification mark registrations
for DARJEELING word and logo marks
granted
2004 - Germany – Collective mark application
filed for DARJEELING word
THE DARJEELING TEA STORY
LEGAL PROTECTION
2007 – On November 12, 2007,
DARJEELING applied for under ECR
510/2006 as a PGI
THE DARJEELING TEA STORY
LEGAL PROTECTION
• The following are some decisions
favoring Tea Board issued by some
national courts:
•
France
• Applicant Dusong adopted the following mark in
respect of goods in classes 16, 35 & 41
THE DARJEELING TEA STORY
LEGAL PROTECTION
• While the Tribunal de Grand Instance rejected
Tea Board’s claim, the Court of Appeal Paris
upheld the same
• The court held that Darjeeling is a GI and the
acts of Mr. Dusong were parasitic and amounted
to unfair competition
• Further, the bad faith adoption was writ large
from the fact that he used a tea pot device along
with the mark
THE DARJEELING TEA STORY
LEGAL PROTECTION
• The court also imposed heavy costs to the tune of
Euros 2000 on Mr. Dusong and directed him at
his expense to publish the decision in three
newspapers (English or French) of the Tea
Board’s Choice within a total of Euros 5000.
THE DARJEELING TEA STORY
LEGAL PROTECTION
•
USA
• DARJEELING v. DARJEELING NOUVEAU
• Opposition filed by Tea Board before the
Trademark Trial and Appellate Board (TTAB)
USA
• Based on its US CTM registrations, Tea Board
demanded that the mark ‘Darjeeling Nouveau’ by
Republic of Tea (ROT) be refused
• ROT filed a counterclaim that Tea Board’s CTM
registrations be cancelled on alleged grounds of
genericness
THE DARJEELING TEA STORY
LEGAL PROTECTION
• While granting Tea Board’s claims, TTAB held
that:
• Darjeeling is an inherently distinctive
certification trademark indicating geographic
origin
• ROT adduced no evidence to prove claims of
genericness and Tea Board had adequate
control over the use of the CTM
• The test for determining genericness of a
mark is its primary significance to the
relevant public
THE DARJEELING TEA STORY
LEGAL PROTECTION
•
TAIWAN – November 18, 2009
• Darjeeling registered in Taiwan by the French company,
DELTA Lingerie in Class 25;
• The Tea Board objected to the registration based on its
rights in the Darjeeling word and logo marks for tea;
• On November 18, 2009 the Taiwan Intellectual Property
Office (TIPO) cancelled the registration, holding:
- Darjeeling is a well known mark of origin represented
by the geographical reach of registration, use,
promotional and advertising activities world wide
- DELTA Lingerie’s mark was highly similar to the
Darjeeling CTM owned by Tea Board
- The use of DELTA Lingerie’s mark in respect of the
similar goods would be diluted of the Tea Board’s
strong Darjeeling Certification Mark.
THE DARJEELING TEA STORY
COMMRERCIAL ANGLE
COMMERCIAL ANGLE
• Commercial angle is as important to
GI protection as legal angle
• What constitutes commercial angle?
• Projection and promotion of the GI
through advertisements
• Need for building brand equity through
promotional campaigns in diverse
markets
THE DARJEELING TEA
STORY
COMMRERCIAL ANGLE
• Tea Board has been:
•
•
•
•
Conducting Tea Festivals in foreign
jurisdictions
Organizing seminars on IPRS and in
particular GIs
Issuing advertisements in the national and
international media promoting Darjeeling
Creating awareness
Trade Supply Chain Integrity System

Introduced a trade chain management system for
surveillance and monitoring of the supply chain and
addressing traceability issues in the Darjeeling tea trade
chain.

Two computerized data
collection centers have
been setup in Darjeeling
and Kolkata, connected
through internet enabled
services.
Trade Supply Chain Integrity System

The system entails computerized collection and validation
of all plantation and processing related data, namely;
– Daily green leaf plucking records
– Daily area plucked records
– Daily Manpower used records
– Daily green leaf transfer/purchase records
– Daily processing records
– Daily invoice entry records
– Daily dispatch records

All 87 registered Gardens have been provided with
customized software for the data entry and submission
Trade Supply Chain Audit

Appointed an independent certification agency to conduct
trade chain audit to check and validate the authenticity of
the data collected through the Trade Supply Chain
Integrity System.

The certification agency will conduct onsite checking and
verification of all the data submitted by all entities in the
trade chain.

Approximately 33 % of the all entities registered under
each category will be audited each year, with every entity
undergoing a complete verification once in 3 years.
Trade Supply Chain Audit

Annually 10% of all the registered entities will be
subject to random and totally unannounced spot
checks.

Full verification/spot-check will be conducted
each year on the basis of a risk analysis.

All data/information/material obtained/generated
during the audits will be kept strictly confidential.
Tea Estate
Tea Estate
Tea Estate
Factory
Auction broker
(no physical handling or
custody of materials
Tea Estate
Tea Estate
Factory
Estate
company’s
Exporter/
Trader’s
Warehouse/Processi
ng unit
Warehouse and
/Processing unit
Final Exporter/
Domestic buyer’s warehouse
First
Overseas
Handler
Second
overseas
Handler
Final
domestic
Handler
S
U
P
P
L
Y
C
H
A
I
N
All Darjeeling
Tea leaving
the shores of
India today is
guaranteed
100%
Darjeeling Tea
IMPACT OF GI PROTECTION ON
DARJEELING TEA TRADE

Increased number of certificate of origin (COO)
issued (1924 in 204 to 2095 in 2008) and
destinations (35 in 2004 to 43 in 2008)

2000-2007 period showed less fluctuations in
Darjeeling prices at auctions

Overall brokens and fannings have moved up
steadily

Entrepreneurs bullish on the Darjeeling tea trade
IMPACT OF GI PROTECTION ON
DARJEELING TEA TRADE

All 87 tea estates in Darjeeling commercially
operational today with a consolidation of
ownership in the Darjeeling Tea industry over the
last 4 years

Adherence to regulations and labeling guidelines

Launch of origin brands (Hindustan Unilever
Limited withdrew its famous Lipton Green Label
brand and introdued Lipton Darjeeling in India
‘Aarogyappacha’
The Healthy Green One

A herb that grows in the Western Ghats in
Southern Kerala;

Having medicinal and other properties known only
to the Kani tribe;

In December 1987, a group of scientists on a
botanical expedition accompanied by a few
members of the Kani tribe;
Aarogyappacha’
The Healthy Green One

During the arduous trek the Kanis constantly keeping
themselves energetic and agile by exploring and eating
some fruits (offered these fruits, scientists felt a sudden
flush of energy and strength)

The Kanis were reluctant to reveal the source of these fruits
considered sacred information, however, were persuaded to
reveal the origin for scientific research;

Detailed scientific investigation of the plant including
chemical screening undertaken and showed the leaves to
possess anti-stress, anti-hepatotoxic and immunodulatory
properties;
Aarogyappacha’
The Healthy Green One

The findings led to the development of a drug Jeevani and a licence
granted to a private company for a fee of 1 Million Indian Rupees;

Most importantly the Kanis were granted 50% of the licence fee as well as
50% of the royalty obtained by the Tropical Botanic Garden & Research
Institute (TBGRI);

In November 1997, some Kanis with assistance of TBGRI formed Kerala
Samudaya Kshema Trust with 09 tribal members and with objectives:
- Welfare and development activities of the Kanis in Kerala;
- Preparation of biodiversity register to document the knowledge base of
the Kanis;
- To evolve and support methods to promote sustainable use and
conservation of biological resources
WHAT CAN YOU DO TO
PROTECT YOUR GIs?

So what is the need of the hour?
 Know that what you have is a GI, recognize it and
elevate it to such a status
 Form an association of producers of such a GI and
make rules as to how to protect the GI
 Define and document traditional practices used to
produce the goods branded as GIs
…contd.
WHAT CAN YOU DO TO
PROTECT YOUR GIs?

So what is the need of the hour?
 Define the geographical boundary where the GI is
produced
 Even if your GI is not registered, start taking action
against any attempts to abuse your GI
 Form rules and regulations for production of the
same and urge all right holders to adhere to the same
INDIA AS A BRAND EXPORTER




Second most populous country: 1.07 billion
Primarily agricultural economy: 21.8 % of
GDP (rice, wheat, tea, coffee, cotton,
potatoes)
The service sector – a fast growing sector
The Indian diaspora as a brand ambassador
INDIA AS A BRAND EXPORTER

Post independence – protectionist industrial
policy

Recognition of foreign investment in high-tech
industries

Post liberalization – FDI allowed in many sectors

State intervention in public sector reduced

A broad industrial base in public/private sectors
INDIA AS A BRAND EXPORTER

Use of IP as a instrument of economic
growth

Large domestic market – An opportunity
for domestic brands

Agricultural economy - unbranded
exports of commodities – Basmati rice,
Darjeeling tea.
INDIA AS A BRAND EXPORTER

Success stories

Maruti Suzuki – Maruti now a strong
international mark

Tata – Major export brand

Mahindra

Kingfisher Beer

Hidesign – leather accessories

Atlas cycles

Infosys

Wipro
THANK YOU!
© 2010 K&S Partners India
rajendra@knspartners.com