Distinctive Signs for Collective Use
Protection &
Promotion
of
Darjeeling Tea
Contents
• India and its GIs
• Darjeeling Tea – A case in point
• Legal Angle
• Domestic protection
• International protection
• Successful enforcements
• Challenges ahead
• Administrative Angle – supply chain integrity
• Commercial Angle – strengthening brand equity
India and its GIs
•Has a history of more than 5000 years
•India has GIs in agricultural products, natural
products, manufactured products and
handicrafts.
•Prior to ‘99 GIs protected under common law
and Trade Marks Act of 1958
•Indian GI law was enacted in 1999 and notified
into effect since 15.09.2003
•Since then over 30 products have been
registered as GIs
Indian Tea Industry
• Estates spread over half a
million hectares
• Produces 945 m kg tea –’07
• Immense geographical
spread in a vast country
• Varied agro-climatic
conditions cause distinct
variations for each region
• More than 3 million work
force
One of the largest Tea
economies of the world
Assam
Darjeeling
Nilgiri
Kangra
TEA MAP OF INDIA
DARJEELING
ASSAM
NILGIRI
Darjeeling Tea: A case in point
•The history of Darjeeling tea - tea gardens were
planted in 1835
•Statutorily controlled by Government as part of
the Tea industry from 1933 under various
enactments culminating in the Tea Act, 1953
•The Tea Board, India is vested with the authority
to administer all stages of tea cultivation,
processing & sale through various orders. Its
mandate includes implementing schemes for
quality control, increase in productivity, R&D,
licensing, promotion, statistics.
Darjeeling Tea
• World famous. Vary from large wiry tippy leaves
to small tippy leaves.
• Black , white , green ,oolong and handpicked
speciality teas.
• Cups are light, bright, fresh with mild
astringency. Infusions are green.
• Teas have attractive bloom and have a round,
mellow flavour. Famous for the muscatel
flavour.
Darjeeling Tea: A case in point
•Cultivated only in 87 designated gardens in
the Darjeeling district.
•The Darjeeling tea industry employs over
52000 people on permanent basis
•Additional 15000 persons engaged during
plucking season – March to November
Darjeeling Tea: A case in point
•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
•Mandated by the Plantation Labour Act, Govt
of India
Darjeeling Tea: A case in point
Protection of Darjeeling tea has impacted :
•Better domestic prices – use of brokens,
fannings, blend corrections
•Increased awareness of Protection Process
amongst trade and industry – better adherence
to Regulations
•Better economic health of the industry – sick
gardens being revived
•A better quality of life for the plantation
worker
GI Protection
The Tea Board has placed emphasis on 3 aspects
in the protection of Darjeeling
• legal angle
• administrative protection whereby the supply
chain integrity of the said GI products is
maintained. Being addressed through the
upgraded software tracking system and proposed
appointment of a ground level inspection agency.
• promotion and strengthening brand equity.
Legal Angle
DOMESTIC PROTECTION
•Darjeeling word and logo have been registered
as CTM (since ’98 and ’86 respectively) in India
•Important features of registration:
•Can apply only to tea produced in the 87
gardens
•Processed in the factories located in the
gardens
Legal Angle
•When tested by tea tasters, it should have
the distinctive and naturally occurring
organoleptic characteristics of taste, aroma
and mouth feel typical of tea cultivated in the
said region
•Any blend of Darjeeling Tea must contain only
teas each of which is a blend of Darjeeling tea
grown in any of the 87 gardens
Legal Angle
•Darjeeling word and logo have been registered
as Geographical Indications under the new GI law
that came into effect in September 2003
•These registrations date back to October 2003.
•In addition, the Tea Board has also registered
the Darjeeling logo as an artistic copyrighted
work
•Both CTM and GI registrations have helped
•Inspection mechanism put in place
Legal Angle
INTERNATIONAL PROTECTION
•Registered in various jurisdictions as a collective
mark, certification mark, official mark, trade mark
and appellation of origin.
-1986 – India – Certification Mark protection
for Darjeeling Logo.
-1988 - Benelux Countries (Belgium,
Netherlands, Luxembourg) – Collective
mark protection for DARJEELING logo
Legal Angle
-1988 - International Registration – Collective
Mark protection for DARJEELING logo
(Germany, Austria, Spain, France, Italy,
Portugal, Switzerland and former
Yugoslavia)
- 1989 - Canada - Official Mark protection for
DARJEELING Logo.
- 1989 - Japan – Trademark protection for
DARJEELING Logo.
Legal Angle
- 1991 - U.S.A.- Certification Mark protection for
DARJEELING Logo.
- 1996 - U.K. - Certification Mark protection for
DARJEELING Logo.
- 1998 - India – Certification Mark protection for
DARJEELING word.
- 1998 - World Wide Watch agency CompuMark
appointed to monitor conflicting marks.
Legal Angle
- Pursuant to the watch agency being appointed:
•Instances of attempted registrations by
third parties found
•Some challenged through oppositions &
cancellations and sometimes negotiations.
- 1999 - Egypt – Trademark protection for
Darjeeling Logo
Legal Angle
-2001 - 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, accepted and published
in the first GI Journal in July 2004
Legal Angle
-2004 - India – Copyright registration for
DARJEELING logo
-2005 - Australia – Certification Mark protection for
DARJEELING word and logo
-2005 - Germany – Collective Mark protection for
DARJEELING word
-2005 - Lebanon – Collective Mark protection for
DARJEELING word & logo
Legal Angle
- 2006 - EU member countries – Community
collective mark protection for DARJEELING
word
- 2007 - Japan – Regional Collective Mark
protection for DARJEELING word
- 2007 - EU - Application under EU 510/2006 filed
for DARJEELING word as a PGI
- 2007 - Taiwan – Certification mark protection for
DARJEELING word & logo
Legal Angle
SUCCESSFUL ENFORCEMENTS
•Tea Board has currently legal battles going on
against third party usurpers in over 15
jurisdictions of the world
•Typical strategy used by Tea Board as soon as it
receives a watch notice is:
•Write to the applicant and try for amicable
resolution
•If not complying then file an opposition/
cancellation action as the case may be
Legal Angle
•The following are some of the notable
successful amicable resolutions:
•France (1)
•Use by applicant of mark ‘Plant Asia
Grand Vert Thé Darjeeling’
•Classes 30, 31 & 32.
•Tea Board wrote to applicant to
withdraw application
•It was accordingly withdrawn.
Legal Angle
•France (2)
•Application by Comptoir Des Parfumes for
DARJEELING for perfumes
•Tea Board wrote to the applicant
•Applicant agreed to limit goods to ‘all those
goods being made of Darjeeling tea or recalling
the scent of Darjeeling tea’
•Filed for amendment
•TMO in France rejected the same on grounds
of descriptiveness
Legal Angle
Germany (1)
•Registration of domain name www.darjeeling.de by
German applicant
•Damages and costs were claimed
•Registrant canceled the domain name and signed a
declaration
•Also paid attorneys costs in full
•Germany (2)
•German company registering the mark TeaKampagne
Darjeeling with Darjeeling logo
•Applicant settled matter by allowing mark to lapse
Legal Angle
•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
Legal Angle
•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 court also imposed heavy costs on Mr.
Dusong
Legal Angle
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
Legal Angle
•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
Challenges ahead
• Registrations under varying legal platforms from
jurisdiction to jurisdiction
• Financial implications
• Delta Lingerie – No confusion/deception as resp
goods distinct & different with different
channels of trade - a question of legal
interpretation of obligations under Art 22.
• Need for higher level of protection – Art 23
Challenges ahead
• Dilution Principles Applicable – Dusong
• Middle East – Lack Of Registration – Civil law
countries
• Global Administrative mechanism for supply
chain integrity
• Change management – domestic & international
Administrative Angle
Supply Chain Integrity
• to be maintained at all levels - green leaf made tea – 1st level of imports & packaging in
importing countries
•All users of Darjeeling tea licensed – importers &
exporters (up to first level), packers
•Account of all teas to be maintained at all stages
•2000 – Launch of the system of issuance of
Certificates of Origin under the Tea (Dist & Export)
Control Order for all Darjeeling Export
consignments
Certification system
Mechanism to record the following processes
Green Leaf # Grown, Harvested, Cultivated and Manufactured Leaf
Made tea # Dispatch # Primary Sales # Auction # Private / Exports #
Imports # Secondary Sales
Tea Board issued a Green Leaf Order on Dec 13,
2006 to monitor green leaf grown and purchased
by registered tea factories in the Darjeeling GI
area.
Indo-Nepal boarder checking and involvement of the
district administrative machinery
Onsite audits and spot checks
•Dedicated EDP Units in Darjeeling and Kolkata
•On the basis of harmonized procedures and
documents specifically developed for the
Darjeeling CTM verification activities
• Transparency of activities and completeness of
data will ensure supportive audits versus
‘policing’
• All data/information/material obtained/
generated during the audits will be kept strictly
confidential
Onsite audits and spot checks
•Appointed an independent certification agency
(presently IMO Control) 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 is conducting onsite
checking and verification of all the data submitted
by all entities in the trade chain
Trade Supply Chain Integrity
System
Commercial Angle - Promotion
Strengthen brand equity
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
Thank you