Distinctive Signs for Collective Use Protection & Promotion of Darjeeling Tea Protection & Promotion of Darjeeling Tea

India and its GIsIndia and its GIs Darjeeling Tea – A case in pointDarjeeling Tea – A case in point Legal AngleLegal Angle Domestic protectionDomestic protection International protectionInternational protection Successful enforcementsSuccessful enforcements Challenges ahead Administrative Angle – supply chain integrityAdministrative Angle – supply chain integrity Commercial Angle – strengthening brand equityCommercial Angle – strengthening brand equity Contents

India and its GIs Has a history of more than 5000 yearsHas a history of more than 5000 years India has GIs in agricultural products, natural products, manufactured products and handicrafts.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 1958Prior 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 Indian GI law was enacted in 1999 and notified into effect since Since then over 30 products have been registered as GIsSince then over 30 products have been registered as GIs

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 Indian Tea Industry

Darjeeling Assam Nilgiri Kangra

TEA MAP OF INDIA NILGIRI ASSAM DARJEELING

Darjeeling Tea: A case in point The history of Darjeeling tea - tea gardens were planted in 1835The 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, 1953Statutorily 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 ordersThe 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.

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

Darjeeling Tea: A case in point Cultivated only in 87 designated gardens in the Darjeeling district.Cultivated only in 87 designated gardens in the Darjeeling district. The Darjeeling tea industry employs over people on permanent basisThe Darjeeling tea industry employs over people on permanent basis Additional persons engaged during plucking season – March to NovemberAdditional persons engaged during plucking season – March to November

Darjeeling Tea: A case in point 60% of the work force is women employed on family basis60% 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 benefitsIncome 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 IndiaMandated 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 correctionsBetter domestic prices – use of brokens, fannings, blend corrections Increased awareness of Protection Process amongst trade and industry – better adherence to RegulationsIncreased awareness of Protection Process amongst trade and industry – better adherence to Regulations Better economic health of the industry – sick gardens being revivedBetter economic health of the industry – sick gardens being revived A better quality of life for the plantation workerA better quality of life for the plantation worker

The Tea Board has placed emphasis on 3 aspects in the protection of Darjeeling 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. GI Protection

Legal Angle DOMESTIC PROTECTION Darjeeling word and logo have been registeredDarjeeling word and logo have been registered as CTM (since 98 and 86 respectively) in India as CTM (since 98 and 86 respectively) in India Important features of registration:Important features of registration: Can apply only to tea produced in the 87 gardensCan apply only to tea produced in the 87 gardens Processed in the factories located in the gardensProcessed 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 regionWhen 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 gardensAny 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 2003Darjeeling 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.These registrations date back to October In addition, the Tea Board has also registered the Darjeeling logo as an artistic copyrighted workIn addition, the Tea Board has also registered the Darjeeling logo as an artistic copyrighted work Both CTM and GI registrations have helpedBoth CTM and GI registrations have helped Inspection mechanism put in placeInspection mechanism put in place

Legal Angle INTERNATIONAL PROTECTION Registered in various jurisdictions asRegistered in various jurisdictions as a collective mark, certification mark, official mark, trade mark and appellation of origin – India – Certification Mark protection for Darjeeling Logo. for Darjeeling Logo Benelux Countries (Belgium, Netherlands, Luxembourg) – Collective Netherlands, Luxembourg) – Collective mark protection for DARJEELING logo mark protection for DARJEELING logo

Legal Angle International Registration – Collective Mark protection for DARJEELING logo Mark protection for DARJEELING logo (Germany, Austria, Spain, France, Italy, (Germany, Austria, Spain, France, Italy, Portugal, Switzerland and former Portugal, Switzerland and former Yugoslavia) Yugoslavia) Canada - Official Mark protection for DARJEELING Logo. DARJEELING Logo Japan – Trademark protection for DARJEELING Logo. DARJEELING Logo.

Legal Angle U.S.A.- Certification Mark protection for DARJEELING Logo U.K. - Certification Mark protection for DARJEELING Logo India – Certification Mark protection for DARJEELING word 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 foundInstances of attempted registrations by third parties found Some challenged through oppositions & cancellations and sometimes negotiations.Some challenged through oppositions & cancellations and sometimes negotiations Egypt – Trademark protection for Darjeeling Logo

UK - Certification mark protection for DARJEELING word DARJEELING word USA - Certification mark protection for DARJEELING word DARJEELING word – Russia – Trade mark registration for DARJEELING word DARJEELING word India – GI application filed for DARJEELING word & logo marks, accepted and published word & logo marks, accepted and published in the first GI Journal in July 2004 in the first GI Journal in July 2004 Legal Angle

India – Copyright registration for DARJEELING logo DARJEELING logo Australia – Certification Mark protection for DARJEELING word and logo DARJEELING word and logo Germany – Collective Mark protection for DARJEELING word DARJEELING word Lebanon – Collective Mark protection for DARJEELING word & logo DARJEELING word & logo

Legal Angle EU member countries – Community collective mark protection for DARJEELING word collective mark protection for DARJEELING word Japan – Regional Collective Mark protection for DARJEELING word protection for DARJEELING word EU - Application under EU 510/2006 filed for DARJEELING word as a PGI for DARJEELING word as a PGI 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 worldTea 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:Typical strategy used by Tea Board as soon as it receives a watch notice is: Write to the applicant and try for amicable resolutionWrite to the applicant and try for amicable resolution If not complying then file an opposition/ cancellation action as the case may beIf 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:The following are some of the notable successful amicable resolutions: France (1)France (1) Use by applicant of mark Plant Asia Grand Vert Thé DarjeelingUse by applicant of mark Plant Asia Grand Vert Thé Darjeeling Classes 30, 31 & 32.Classes 30, 31 & 32. Tea Board wrote to applicant to withdraw applicationTea Board wrote to applicant to withdraw application It was accordingly withdrawn.It was accordingly withdrawn.

Legal Angle France (2)France (2) Application by Comptoir Des Parfumes for DARJEELING for perfumesApplication by Comptoir Des Parfumes for DARJEELING for perfumes Tea Board wrote to the applicantTea 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 teaApplicant agreed to limit goods to all those goods being made of Darjeeling tea or recalling the scent of Darjeeling tea Filed for amendmentFiled for amendment TMO in France rejected the same on grounds of descriptivenessTMO in France rejected the same on grounds of descriptiveness

Legal Angle Germany (1) Registration of domain name by German applicantRegistration of domain name by German applicantwww.darjeeling.de Damages and costs were claimedDamages and costs were claimed Registrant canceled the domain name and signed a declarationRegistrant canceled the domain name and signed a declaration Also paid attorneys costs in fullAlso paid attorneys costs in full Germany (2)Germany (2) German company registering the mark TeaKampagne Darjeeling with Darjeeling logoGerman company registering the mark TeaKampagne Darjeeling with Darjeeling logo Applicant settled matter by allowing mark to lapseApplicant settled matter by allowing mark to lapse

Legal Angle The following are some decisions favoring Tea Board issued by some national courts:The following are some decisions favoring Tea Board issued by some national courts: FranceFrance Applicant Dusong adopted the following mark in respect of goods in classes 16, 35 & 41Applicant Dusong adopted the following mark in respect of goods in classes 16, 35 & 41

Legal Angle While the Tribunal de Grand Instance rejected Tea Boards claim, the Court of Appeal Paris upheld the sameWhile the Tribunal de Grand Instance rejected Tea Boards 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 competitionThe 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 markFurther, 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. DusongThe court also imposed heavy costs on Mr. Dusong

Legal Angle USA DARJEELING v. DARJEELING NOUVEAUDARJEELING v. DARJEELING NOUVEAU Opposition filed by Tea Board before the Trademark Trial and Appellate Board (TTAB) USAOpposition 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 refusedBased 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 Boards CTM registrations be cancelled on alleged grounds of genericnessROT filed a counterclaim that Tea Boards CTM registrations be cancelled on alleged grounds of genericness

Legal Angle While granting Tea Boards claims, TTAB held that:While granting Tea Boards claims, TTAB held that: Darjeeling is an inherently distinctive certification trademark indicating geographic originDarjeeling 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 CTMROT 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 publicThe 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 – 1 st 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 jurisdictionsConducting Tea Festivals in foreign jurisdictions Organizing seminars on IPRS and in particular GIsOrganizing seminars on IPRS and in particular GIs Issuing advertisements in the national and international media promoting DarjeelingIssuing advertisements in the national and international media promoting Darjeeling Creating awarenessCreating awareness

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