leveraging legal protection for commercial gain protection & promotion of darjeeling tea...

Leveraging Legal Protection for Leveraging Legal Protection for Commercial GainCommercial Gain

Leveraging Legal Protection for Leveraging Legal Protection for Commercial GainCommercial Gain

Protection & Promotion

of Darjeeling Tea

Protection & Promotion

of Darjeeling Tea

• Darjeeling Tea – A case in pointDarjeeling Tea – A case in point• Legal AngleLegal Angle

• Domestic protection Domestic protection • International protectionInternational protection• Successful enforcementsSuccessful enforcements• Challenges ahead

• Administrative Angle – supply chain Administrative Angle – supply chain integrityintegrity

• Commercial Angle – strengthening brand Commercial Angle – strengthening brand equityequity

ContentsContents

• 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 forceOne of the largest Tea economies of the world

IndianIndian Tea IndustryTea IndustryIndianIndian Tea IndustryTea Industry

Darjeeling Assam

Nilgiri KangraKangra

TEA MAP OF INDIA

NILGIRI

ASSAM

DARJEELING

Darjeeling Tea: A case in pointDarjeeling Tea: A case in point

•The history of Darjeeling tea - tea The history of Darjeeling tea - tea gardens were planted in 1835gardens were planted in 1835•Statutorily controlled by Government as Statutorily controlled by Government as part of the Tea industry from 1933 under part of the Tea industry from 1933 under various enactments culminating in the various enactments culminating in the Tea Act, 1953 Tea Act, 1953 •The Tea Board, India is vested with the The Tea Board, India is vested with the authority to administer all stages of tea authority to administer all stages of tea cultivation, processing & sale through cultivation, processing & sale through various ordersvarious orders. Its mandate includes implementing schemes for quality control, increase in productivity, R&D, licensing, promotion, statistics.

•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 Darjeeling TeaTea

Darjeeling Darjeeling TeaTea


•Cultivated only in 87 designated Cultivated only in 87 designated gardens in the Darjeeling district.gardens in the Darjeeling district.•The Darjeeling tea industry employs The Darjeeling tea industry employs over 52000 people on permanent basisover 52000 people on permanent basis•Additional 15000 persons engaged Additional 15000 persons engaged during plucking season – March to during plucking season – March to NovemberNovember


•60% of the work force is women 60% of the work force is women employed on family basis employed on family basis •Income of a garden worker half in the Income of a garden worker half in the form of cash and the other half by way form of cash and the other half by way of perquisites with access to free of perquisites with access to free accommodation, subsidies cereal accommodation, subsidies cereal ration and free medical benefitsration and free medical benefits•Mandated by the Plantation Labour Mandated by the Plantation Labour Act, Govt of IndiaAct, Govt of India


Protection of Darjeeling tea has Protection of Darjeeling tea has impacted :impacted :

•Better domestic prices – use of Better domestic prices – use of brokens, fannings, blend correctionsbrokens, fannings, blend corrections•Increased awareness of Protection Increased awareness of Protection Process amongst trade and industry – Process amongst trade and industry – better adherence to Regulationsbetter adherence to Regulations•Better economic health of the Better economic health of the industry – sick gardens being revived industry – sick gardens being revived •A better quality of life for the A better quality of life for the plantation workerplantation worker

The Tea Board has placed emphasis on 3 The Tea Board has placed emphasis on 3 aspectsaspects

in the protection of Darjeelingin 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.

GI ProtectionGI Protection

Legal AngleLegal Angle

DOMESTIC PROTECTIONDOMESTIC PROTECTION•Darjeeling word and logo have been Darjeeling word and logo have been registered registered

as CTM (since ’98 and ’86 respectively) as CTM (since ’98 and ’86 respectively) in Indiain India•Important features of registration:Important features of registration:

•Can apply only to tea produced in the Can apply only to tea produced in the 87 gardens87 gardens•Processed in the factories located in Processed in the factories located in the gardensthe gardens


•When tested by tea tasters, it should When tested by tea tasters, it should have the distinctive and naturally have the distinctive and naturally occurring organoleptic characteristics occurring organoleptic characteristics of taste, aroma and mouth feel typical of taste, aroma and mouth feel typical of tea cultivated in the said regionof tea cultivated in the said region•Any blend of Darjeeling Tea must Any blend of Darjeeling Tea must contain only teas each of which is a contain only teas each of which is a blend of Darjeeling tea grown in any of blend of Darjeeling tea grown in any of the 87 gardensthe 87 gardens


•Darjeeling word and logo have been Darjeeling word and logo have been registered as Geographical Indications registered as Geographical Indications under the new GI law under the new GI law •These registrations date back to These registrations date back to October 2003.October 2003.•In addition, the Tea Board has also In addition, the Tea Board has also registered the Darjeeling logo as an registered the Darjeeling logo as an artistic copyrighted workartistic copyrighted work•Both CTM and GI registrations have Both CTM and GI registrations have helpedhelped•Inspection mechanism put in placeInspection mechanism put in place


INTERNATIONAL PROTECTIONINTERNATIONAL PROTECTION

•Registered in various jurisdictions asRegistered in various jurisdictions as a collective mark, certification mark, official mark, trade mark and appellation of origin.

-1986 1986 – India – Certification Mark – India – Certification Mark protection protection

for Darjeeling Logo.for Darjeeling Logo.-1988 - Benelux Countries (Belgium, 1988 - Benelux Countries (Belgium,

Netherlands, Luxembourg) – Netherlands, Luxembourg) – Collective Collective

mark protection for DARJEELING mark protection for DARJEELING logologo


-1988 - International Registration – 1988 - International Registration – Collective Collective Mark protection for DARJEELING Mark protection for DARJEELING logo logo (Germany, Austria, Spain, France, (Germany, Austria, Spain, France, Italy, Italy, Portugal, Switzerland and former Portugal, Switzerland and former Yugoslavia)Yugoslavia)

- 1989 - Canada - Official Mark protection - 1989 - Canada - Official Mark protection for for DARJEELING Logo.DARJEELING Logo.

- 1989 - Japan – Trademark protection for - 1989 - Japan – Trademark protection for DARJEELING Logo.DARJEELING Logo.


- - 1991 - U.S.A.- Certification Mark 1991 - U.S.A.- Certification Mark protection for DARJEELING Logo.protection for DARJEELING Logo.

- 1996 - U.K. - Certification Mark - 1996 - U.K. - Certification Mark protection for DARJEELING Logo.protection for DARJEELING Logo.

- 1998 - India – Certification Mark - 1998 - India – Certification Mark protection for DARJEELING word.protection for DARJEELING word.

- 1998 - World Wide Watch agency 1998 - World Wide Watch agency CompuMark appointed to monitor CompuMark appointed to monitor conflicting marks.conflicting marks.


- Pursuant to the watch agency being - Pursuant to the watch agency being appointed:appointed:

•Instances of attempted Instances of attempted registrations by third parties foundregistrations by third parties found•Some challenged through Some challenged through oppositions & cancellations and oppositions & cancellations and sometimes negotiations. sometimes negotiations.

- 1999 - Egypt – Trademark protection for - 1999 - Egypt – Trademark protection for Darjeeling LogoDarjeeling Logo

-2001 - UK - Certification mark protection 2001 - UK - Certification mark protection for for

DARJEELING wordDARJEELING word-2002 - USA - Certification mark protection 2002 - USA - Certification mark protection for for

DARJEELING wordDARJEELING word -2003 – Russia – Trade mark registration for 2003 – Russia – Trade mark registration for

DARJEELING wordDARJEELING word-2003 - India – GI application filed for 2003 - India – GI application filed for DARJEELING DARJEELING

word & logo marks, accepted and word & logo marks, accepted and published published

in the first GI Journal in July 2004in the first GI Journal in July 2004



-2004 - India – Copyright registration for 2004 - India – Copyright registration for

DARJEELING logoDARJEELING logo-2005 - Australia – Certification Mark 2005 - Australia – Certification Mark protection for protection for

DARJEELING logo and word (2007)DARJEELING logo and word (2007)-2005 - Germany – Collective Mark 2005 - Germany – Collective Mark protection for protection for

DARJEELING word DARJEELING word -2005 - Lebanon – Collective Mark 2005 - Lebanon – Collective Mark protection for protection for

DARJEELING word & logoDARJEELING word & logo


- 2006 - EU member countries – - 2006 - EU member countries – Community Community collective mark protection for collective mark protection for DARJEELING DARJEELING word word

- 2007 - Japan – Regional Collective - 2007 - Japan – Regional Collective Mark Mark

protection for DARJEELING wordprotection for DARJEELING word

- 2007 - EU - Application under EU - 2007 - EU - Application under EU 510/2006 filed 510/2006 filed

for DARJEELING word as a PGIfor DARJEELING word as a PGI

- 2008 - Taiwan – Certification mark - 2008 - Taiwan – Certification mark protection for protection for DARJEELING word DARJEELING word & logo& logo


SUCCESSFUL ENFORCEMENTSSUCCESSFUL ENFORCEMENTS•Tea Board has currently legal battles Tea Board has currently legal battles going on against third party usurpers in going on against third party usurpers in over 15 jurisdictions of the worldover 15 jurisdictions of the world•Typical strategy used by Tea Board as Typical strategy used by Tea Board as soon as it receives a watch notice is:soon as it receives a watch notice is:

•Write to the applicant and try for Write to the applicant and try for amicable resolutionamicable resolution•If not complying then file an If not complying then file an opposition/ cancellation action as the opposition/ cancellation action as the case may becase may be


•The following are some of the notable The following are some of the notable successful amicable resolutions:successful amicable resolutions:

•France (1)France (1)•Use by applicant of mark ‘Plant Use by applicant of mark ‘Plant Asia Grand Vert Thé Darjeeling’ Asia Grand Vert Thé Darjeeling’ •Classes 30, 31 & 32. Classes 30, 31 & 32. •Tea Board wrote to applicant to Tea Board wrote to applicant to withdraw applicationwithdraw application•It was accordingly withdrawn.It was accordingly withdrawn.


•France (2)France (2)•Application by Comptoir Des Parfumes Application by Comptoir Des Parfumes for DARJEELING for perfumesfor DARJEELING for perfumes•Tea Board wrote to the applicant Tea Board wrote to the applicant •Applicant agreed to limit goods to ‘all Applicant agreed to limit goods to ‘all those goods being made of Darjeeling those goods being made of Darjeeling tea or recalling the scent of Darjeeling tea or recalling the scent of Darjeeling tea’ tea’ •Filed for amendmentFiled for amendment•TMO in France rejected the same on TMO in France rejected the same on grounds of descriptivenessgrounds of descriptiveness


Germany (1)Germany (1)•Registration of domain name Registration of domain name www.darjeeling.de by German applicant by German applicant•Damages and costs were claimedDamages and costs were claimed•Registrant canceled the domain name and Registrant canceled the domain name and signed a declaration signed a declaration •Also paid attorneys costs in fullAlso paid attorneys costs in full

•Germany (2)Germany (2)•German company registering the mark German company registering the mark TeaKampagne Darjeeling with Darjeeling TeaKampagne Darjeeling with Darjeeling logologo•Applicant settled matter by allowing mark Applicant settled matter by allowing mark to lapseto lapse

http://www.darjeeling.de/


•The following are some decisions The following are some decisions favoring Tea Board issued by some favoring Tea Board issued by some national courts:national courts:

•FranceFrance•Applicant Dusong adopted the Applicant Dusong adopted the following mark in respect of following mark in respect of goods in classes 16, 35 & 41goods in classes 16, 35 & 41


•While the Tribunal de Grand Instance While the Tribunal de Grand Instance rejected Tea Board’s claim, the Court of rejected Tea Board’s claim, the Court of Appeal Paris upheld the sameAppeal Paris upheld the same•The court held that Darjeeling is a GI The court held that Darjeeling is a GI and the acts of Mr. Dusong were and the acts of Mr. Dusong were parasitic and amounted to unfair parasitic and amounted to unfair competitioncompetition•Further, the bad faith adoption was Further, the bad faith adoption was writ large from the fact that he used a writ large from the fact that he used a tea pot device along with the marktea pot device along with the mark•The court also imposed heavy costs on The court also imposed heavy costs on Mr. DusongMr. Dusong


USAUSA•DARJEELING v. DARJEELING NOUVEAUDARJEELING v. DARJEELING NOUVEAU•Opposition filed by Tea Board before Opposition filed by Tea Board before the Trademark Trial and Appellate the Trademark Trial and Appellate Board (TTAB) USABoard (TTAB) USA•Based on its US CTM registrations, Tea Based on its US CTM registrations, Tea Board demanded that the mark Board demanded that the mark ‘Darjeeling Nouveau’ by Republic of Tea ‘Darjeeling Nouveau’ by Republic of Tea (ROT) be refused(ROT) be refused•ROT filed a counterclaim that Tea ROT filed a counterclaim that Tea Board’s CTM registrations be cancelled Board’s CTM registrations be cancelled on alleged grounds of genericnesson alleged grounds of genericness


•While granting Tea Board’s claims, While granting Tea Board’s claims, TTAB held that:TTAB held that:

•Darjeeling is an inherently Darjeeling is an inherently distinctive certification trademark distinctive certification trademark indicating geographic originindicating geographic origin•ROT adduced no evidence to prove ROT adduced no evidence to prove claims of genericness and Tea Board claims of genericness and Tea Board had adequate control over the use of had adequate control over the use of the CTMthe CTM•The test for determining The test for determining genericness of a mark is its primary genericness of a mark is its primary significance to the relevant publicsignificance to the relevant public

Challenges aheadChallenges 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 aheadChallenges 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 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 systemCertification 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 checksOnsite 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 checksOnsite audits and spot checks

•Appointing an independent certification agency to conduct trade chain audit/ ground level check to validate the authenticity of the data collected through the Trade Supply Chain Integrity System.•The certification agency is to conducting onsite checking and verification of all the data submitted by all entities in the trade chain•Importers online registration process is undergoing trial currently

Commercial Angle - Promotion

Commercial Angle - Promotion

Strengthen brand equityStrengthen brand equity

Tea Board has been:Tea Board has been:• Conducting Tea Festivals in foreign Conducting Tea Festivals in foreign

jurisdictionsjurisdictions• Organizing seminars on IPRS and in Organizing seminars on IPRS and in

particular GIsparticular GIs• Issuing advertisements in the national Issuing advertisements in the national

and international media promoting and international media promoting DarjeelingDarjeeling

• Creating awarenessCreating awareness

Thank you

leveraging legal protection for commercial gain protection & promotion of darjeeling tea...

Documents

tea act

pointdarjeeling tea

stages of tea cultivation

largest tea economies

darjeeling district

various ordersthe tea

govt of india slide

legal protection