MANAGING THE CHALLENGES OF WTO PARTICIPATION: CASE STUDY 16
Protecting the Geographical Indication for Darjeeling Tea
S. C. Srivastava*
Opinions expressed in the case studies and any errors or omissions therein are the responsibility of their authors and not of the editors of this volume or of the institutions with which they are affiliated. The authors of the case studies wish to disassociate the institutions with which they are associated from opinions expressed in the case studies and from any errors or omission therein.
ON THIS PAGE:
> I. The problem in context
> Efforts made by the Tea Board to ensure the supply of genuine Darjeeling tea
> Legal protection at domestic level
> Steps taken at international level
> II. Local and external players and their roles
> III. Challenges faced and the outcome
> Unauthorized use and registration of Darjeeling Tea and logo in Japan
> Other instances of defending GI against developed countries
> Costs of protection and enforcement for the industry and the government
> IV. Lessons for others
This case study relates to the geographical indication (GI) protection of Darjeeling tea. It tells the story of the unauthorized use and registration of ‘Darjeeling and Darjeeling logo’ by Japanese companies already registered in Japan by the Tea Board of India. The study also refers to the unauthorized use and attempted registration of the words ‘Darjeeling and Darjeeling logo’ by some other developed countries.
I. The problem in context
India is the world’s largest producer of tea, with a total production of 846 million kg in the year 2002, supplying about 31 per cent of the world’s favourite hot drink. Among the teas grown in India, Darjeeling tea offers distinctive characteristics of quality and flavour, and also a global reputation for more than a century. Broadly speaking there are two factors which have contributed to such an exceptional and distinctive taste, namely geographical origin and processing. Thus Darjeeling tea has been cultivated, grown and produced in tea gardens in a well-known geographical area — the Darjeeling district in the Indian state of West Bengal — for over one and a half centuries. The tea gardens are located at elevations of over 2000 metres above sea level.
Even though the tea industry in India lies in the private sector, it has been statutorily regulated and controlled by the Ministry of Commerce since 1933 under various enactments culminating in the Tea Act, 1953. The Tea Board was set up under this Act. A major portion of the annual production of Darjeeling tea is exported, the key buyers being Japan, Russia, the United States, and the United Kingdom and other European Union (EU) countries such as France, Germany and the Netherlands.
Efforts made by the Tea Board to ensure the supply of genuine Darjeeling tea back to top
In order to ensure the supply of genuine Darjeeling tea, a compulsory system of certifying the authenticity of exported Darjeeling tea was incorporated into the 1953 Tea Act in February 2000. The system makes it compulsory for all the dealers in Darjeeling tea to enter into a licence agreement with the Tea Board of India on payment of an annual licence fee. The terms and conditions of the agreement provide, inter alia, that the licensees must furnish information relating to the production and manufacture of Darjeeling tea and its sale, through auction or otherwise. The Tea Board is thus able to compute and compile the total volume of Darjeeling tea produced and sold in the given period. No blending with teas of other origin is permitted. Certificates of origin are then issued for export consignments under the Tea (Marketing and Distribution Control) Order, 2000, read with the Tea Act, 1953. Data is entered from the garden invoices (the first point of movement outside the factory) into a database, and the issue of the certificate of origin authenticates the export of each consignment of Darjeeling tea by cross-checking the details. The customs authorities in India have instructed, by circular, all customs checkpoints to check for the certificates of origin accompanying the Darjeeling tea consignments and not to allow the export of any tea as ‘Darjeeling’ without this certificate. This ensures the sale-chain integrity of Darjeeling tea until consignments leave the country.
Legal protection at domestic level back to top
In order to provide legal protection in India the Tea Board of India registered the ‘Darjeeling logo’ and also the word ‘Darjeeling’ as certification trade marks (CTMs) under the (Indian) Trade and Merchandise Marks Act, 1958 (now the Trade Marks Act, 1999).
The Tea Board of India has also applied for the registration of the words ‘Darjeeling’ and ‘Darjeeling logo’ under the Geographical Indications of Goods (Registration and Protection) Act, 1999 (the Act) which came into force with effect from 15 September 2003, in addition to the CTMs mentioned above.
Under the Act:
- No person shall be entitled to institute any proceeding to prevent
or recover damages for the infringement of unregistered geographical
- A registration of geographical indications shall give to the
registered proprietor and all authorized users whose names have been
entered in the register the right to obtain relief in respect of
infringement of the geographical indications. However, authorized users
alone shall have the exclusive right to the use of the geographical
indications in relation to the goods in respect of which the
geographical indications are registered.
- A registered geographical indication is infringed by a person who, not being an authorized user thereof,
- uses such geographical indications by any means in the designation
or presentation of goods that indicates or suggests that such goods
originate in some other geographical area other than the true place of
origin of the goods in a manner which misleads the public; or
- uses any geographical indications in such a manner which
constitutes an act of unfair competition including passing off in
respect of registered geographical indications; or
- uses another geographical indication to the goods which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in the region, territory or locality in respect of which such registered geographical indications relate.
- The purpose of the GI Act is to create a public register, and
- The GI Act confers public rights.
Status of registration of GI
The registration of the marks applied for by the Tea Board of India has not yet been granted. The Registrar has, however, after examining the application for registration filed by the Tea Board of India advertised for any expression of opposition. It is only after considering opposition, if any, that the Registrar may decide to register the GI of the Tea Board.
Advantages of GI protection at domestic level and export markets
The reasons for the need for additional protection for GI over and above the CTM has been set out by the chair of the Tea Board of India as follows.
- When CTM registration is not accepted in a jurisdiction
where protection is sought, for example, France for Darjeeling;
- because GI registration is necessary to obtain reciprocal
protection of a mark mandate under EU Regulation 2081/92; and
- registration gives clear status to a GI, indicating a direct link with geographical origin.(1)
Quite apart from the aforesaid reasons the GI Act in India has also been enacted in order to comply with its obligation under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which requires WTO members to enact appropriate implementation legislation for GI.
Steps taken at international level back to top
Registration of Darjeeling tea and logo
In order to protect ‘Darjeeling’ and ‘Darjeeling logo’ as GI, the Tea Board of India registered the marks in various countries, including the United States, Canada, Japan, Egypt, and the United Kingdom and some other European countries, as a trade mark/CTM. In this context it is relevant to note that on 3 August 2001 the UK Trade Registry granted registration of the word ‘Darjeeling’ as of 30 March 1998 under the UK Trade Marks Act 1994. The United States has also accepted the application of the Tea Board for the registration of ‘Darjeeling’ as a CTM in October 2002.
The appointment of the International Watch Agency
In order to prevent the misuse of ‘Darjeeling’ and the logo, the Tea Board has since 1998 hired the services of Compumark, a World Wide Watch agency. Compumark is required to monitor and report to the Tea Board all cases of unauthorized use and attempted registration. Pursuant to Compumark’s appointment, several cases of attempted registrations and unauthorized use of ‘Darjeeling’ and Darjeeling Logo have been reported.
The assistance of overseas buyers
In order to ensure the supply of genuine Darjeeling tea, the Tea Board has sought the help of all overseas buyers, sellers and Tea Council and Associations in so far as they should insist on certificates of origin to accompany all export consignments of Darjeeling tea.
II. Local and external players and their roles
The Tea Board of India, the sole representative of tea producers in India, is responsible for the implementation of the government’s regulations and policies. It is vested with the authority to administer all stages of tea cultivation, processing and sale (including the Darjeeling segment) through various orders issued by the government. It works in close co-operation with the Darjeeling Planter’s Association, which is the sole producers’ forum for Darjeeling tea. Both the Tea Board and the Darjeeling Planter’s Association (DPA) have been involved at various levels in protecting and defending the ‘Darjeeling tea’ and ‘Darjeeling logo’. The primary objects are (i) to prevent misuse of the word ‘Darjeeling’ for tea sold worldwide; (ii) to deliver the correct product to the consumer; (iii) to enable the commercial benefit of the equity of the brand to reach the Indian tea industry and ultimately the plantation worker; (iv) to achieve international status similar to champagne or Scotch whisky in terms of both brand and equity and governance/administration.
The Tea Board of India assumed the role of complainant in making and filing opposition or other legal measures whenever cases of unauthorized use or attempted or actual registration of Darjeeling and Darjeeling logo were brought to its notice. Such legal measures are generally taken where negotiation failed. For instance, in February 2000 in Japan the Tea Board of India filed an opposition against Yutaka Sang yo Kabushiki Kaisa of Japan for registration of the trade mark ‘Darjeeling Tea’ with the map of India, the International Tea KK of Japan for registration of Darjeeling Women device in Japan under class 30/42 (tea, coffee and cocoa) and against Mitsui Norin KK for the use in advertising of the ‘Divine Darjeeling’ logo. These opposing parties defended the invalidation action filed against them.
Some disputes relating to Darjeeling tea have been settled through negotiation undertaken by the Tea Board of India with the foreign companies concerned with the help of their respective governments. Thus, the Tea Board with the help of the Indian government continues to negotiate with France at various levels over the activities of the French trademark authorities. Moreover BULGARI, Switzerland agreed to withdraw the legend ‘Darjeeling Tea fragrance for men’ pursuant to legal notice and negotiations.(2)
In one of the cases in France, the Tea Board of India put the applicant Comptoir des Parfums (which advertised in March 1999) on notice, and drew its attention to the prior rights and goodwill in the name of Darjeeling as the GI for tea, requiring it to withdraw its application voluntarily. Based on the correspondence the applicant consented to the amendment of all specifications of goods by the addition of ‘all those goods being made of Darjeeling tea or recalling the scent of Darjeeling tea’. The amendment proposed by the applicant was found by the examiner to be descriptive of the goods in question.
‘The Tea Board of India feels that a partnership with the buyers in the major consuming countries such as Germany, Japan and the United Kingdom would be the only long term solution to the problem of possible passing off.’ However, it strongly opposes any attempt at individual registration in the case of private labels or its misuse in specific overseas jurisdictions.(3)
III. Challenges faced and the outcome
The Tea Board of India has faced a series of hurdles, challenges and difficulties in the protection and enforcement of the word ‘Darjeeling’ and of the Darjeeling logo. Some of the major challenges faced by the Tea Board’s effort to protect ‘Darjeeling’ and the Darjeeling logo in Japan, France, Russia, the United States and other countries are given below.
Unauthorized use and registration of Darjeeling Tea and logo in Japan back to top
In the first case the Tea Board filed an invalidation action against International Tea KK, a Japanese Company, over the registration of the Darjeeling logo mark, namely, Darjeeling women ‘serving tea/coffee/coca/soft drinks/fruit juice’ in the Japanese Patent Office (JPO) on 29 November 1996 with the trademark registration number 3221237. The impugned registration was made notwithstanding the registration in Japan of the identical Darjeeling logo mark by the Tea Board of India, with the trademark registration number 2153713, dated 31 July 1987. The Tea Board also filed a non-use cancellation action. On 28 August 2002 the JPO Board of Appeal held that the pirate registration was invalid because it was contrary to public order and morality. With regard to the Tea Board’s non-use cancellation action, the JPO decided that International Tea KK had not furnished sufficient evidence to substantiate its use of registration and thereby allowed the appeal of the Tea Board.
In the second case, the Tea Board of India opposed the application for ‘Divine Darjeeling’ in class 30 (Darjeeling tea, coffee and cocoa produced in Darjeeling, India) filed by Mitsui Norin KK of Japan advertised on 29 February 2000. The opposition was mainly on three grounds, namely (i) ‘divine’ is a laudatory term and accordingly the mark for which protection is sought is merely ‘Darjeeling’, which is clearly non-distinctive; (ii) ‘Divine Darjeeling’ is misleading in so far as ‘coffee and cocoa produced in Darjeeling’ are concerned, all the more so because the district of Darjeeling does not produce coffee or cocoa; (iii) Darjeeling tea qualifies as a geographical indication under international conventions including TRIPS and ought to be protected as such in Japan, a member of TRIPS.
The JPO Opposition Board dismissed the invalidation action filed by the Tea Board of India primarily on the ground that the mark ‘Divine Darjeeling’ as a whole was not misleading or descriptive of the quality of goods. However, the non-use cancellation action succeeded, because the registered proprietor was not able to place on record adequate evidence to prove the use of the mark in Japan.
In yet another case the Tea Board of India brought an invalidation action against Japanese trade mark registration of ‘Darjeeling tea’ with a map of India in class 30 by Yutaka Sangyo Kabushiki Kaisa, on the ground that the registration was contrary to public order and morality. This action was rejected on the ground that ‘the written English characters “Darjeeling tea” and the map of India for the goods of Darjeeling tea are used as an indication of the origin and quality of Darjeeling tea and will not harm the feelings of the Indian people’. However, the non-use cancellation action filed by the Tea Board succeeded, because the registered proprietor was not able to place on record sufficient evidence to prove the use of the mark in Japan.
A perusal of these decisions reveals that the JPO did not decide the contention of the Tea Board of India relating to the TRIPS Agreement, which requires WTO members to provide the legal means to prevent the use of a GI for goods originating in a geographical area other than the true place of origin in a manner which misleads the public to constitute an act of unfair competition. Indeed, non-disposal of the argument that the procedural guidelines of WTO be followed dilutes the effect of the TRIPS Agreement.
Other instances of defending GI against developed countries back to top
France. While the Indian system protects French GIs, France on the other hand does not extend similar or reciprocal protection to Indian GIs. Thus French law does not permit any opposition to an application for a trademark similar or identical to a GI if the goods covered are different from those represented by the GI. The owner of the GI can take appropriate judicial proceedings only after the impugned application has proceeded to registration. The net effect of such a provision has been that despite India’s protests, Darjeeling has been misappropriated as a trade mark in respect of several goods in class 25, namely, clothing, shoes and headgear. The French Examiner — even though he found evidence in favour of the Tea Board of India (i) on sufficient proof of use of ‘Darjeeling’ tea in France, and (ii) that the applicant had slavishly copied the name Darjeeling in its application — held that the respective goods ‘clothing, shoes, headgear’ and ‘tea’ are not of the same nature, function and intended use, produced in different places and sold through different networks. The Examiner also held that even if the applicant has slavishly copied the Tea Board’s Darjeeling logo (being the prior mark), the difference in the nature of the respective goods is sufficient to hold that the applicant’s mark may be adopted without prejudicing the Tea Board’s rights in the name ‘Darjeeling’.
In another case the Tea Board opposed the application against the advertised marks for Darjeeling in classes 5, 12 and 28 by Dor François Marie in France. The French Examiner rejected the Tea Board’s opposition and held that the respective goods did not (i) have the same nature, function and intended use; and (ii) share the same distribution circuits. However, he held that although the applicant’s mark constituted a partial reproduction of the Tea Board’s prior figurative registration for the Darjeeling logo, the designated goods lacked similarity to that of the Tea Board’s prior marks and the logo, therefore, may be used as a trade mark without prejudicing the prior rights of the Tea Board.
Russia. The Tea Board filed an application for unauthorized use by a company of the word ‘Darjeeling’. This application was objected to on the ground of conflict with an earlier registration of the identical word by a company named ‘Akorus’. The Russian Patent Office overruled the objection and accepted the application of Tea Board of India for the word ‘Darjeeling’.
United States. The Tea Board is opposing an application filed by its licensee in United States to register ‘Darjeeling nouveau’ (‘nouveau’ is the French for ‘new’) relating to diverse goods and service such as clothing, lingerie, Internet services, coffee, cocoa and so on in respect of first flush Darjeeling tea. The registration application is under consideration even though ‘Darjeeling’ is already registered under US CTM law.
Other countries. Quite apart from the above, in several cases the Tea Board of India opposed attempted registration and unauthorized use of the word ‘Darjeeling’ in Germany, Israel, Norway and Sri Lanka before the Patent Office of the country concerned.
Costs of protection and enforcement for the industry and the government back to top
Another major challenge faced by the Tea Board of India relates to legal and registration expenses, costs of hiring an international watch agency and fighting infringements in overseas jurisdictions. Thus during the last four years the Tea Board of India has spent approximately US$200, 000 for these purposes. This amount does not include administrative expenses including the relevant personnel working for the Tea Board, the cost of setting up monitoring mechanisms, software development costs and so forth. It is not possible for every geographical indication right holder to incur such expenses for protection. Further, like overseeing, monitoring and implementing GI protection, the high cost of taking legal action can prevent a country from engaging a lawyer to contest the case, however genuine and strong the case may be. Moreover, a lack of expertise in the proper handling of highly complex legal language is another challenge to be met.
IV. Lessons for others
The Tea Board of India appears to be not satisfied with the policy as well as the approach of the patent authority in Japan and France. In order to deal with the situations described above, India, along with several other member countries of the WTO, wants to extend the proposed register for GI to include products or goods, other than wines and spirits, which may be distinguished by the quality, reputation or other characteristics essentially attributable to their geographical origin. The main advantage would be to develop a multilateral system of notification and registration of all geographical indications. In this connection, a joint paper has recently been submitted to the Two’s TRIPS Council. The Doha Ministerial Declaration under paragraphs 12 and 18 also provides a mandate for the issue of providing a higher level of protection to GIs to products other than ‘wines and spirits’ to be addressed by the TRIPS Council. According to the Tea Board, (i) extension of protection under Article 23 for products other than wines and spirits is required where no legal platform exists to register a GI or a CTM which is a TRIPS obligation, for example Japan; (ii) once the scope of protection is extended it would not be necessary to establish the credentials/reputation of a GI before fighting the infringement of similar ‘types’, ‘styles’, or ‘look-alikes’; and (iii) additional protection would rectify the imbalance created by the special protection of wines and spirits.(4)
The experience in defending GI in France, the United States and Japan further strengthens the Tea Board’s perspective on the subject. Despite a registration of ‘Darjeeling’ as a GI in France, the Tea Board was unsuccessful in defending it because French law does not permit any opposition to an application for a trade mark, similar or identical to a GI. Likewise, India’s efforts to protect ‘Darjeeling’ in Japan did not succeed because the prefix ‘Divine’ has not gained currency in the Japanese language.(5) From the experiences described above it is felt that it is high time to evolve a rule that no application for registration of a GI of the same or similar goods or products or even similar type, style or look-alike already registered in that country be ordinarily entertained by the competent authority of the country concerned. Further, the GI status and apprehended or actual violation of GI should be published at both domestic and international levels. Moreover, adequate steps should be taken to evolve rules and procedures for GI or CTM registration in all the member countries of the WTO. This would prevent conflict to a great extent. Finally, a vigilance cell should be established to check the violation and misuse of the GI of any product.
1.- Tea Board of India, ‘The Experience of Indian Tea Producers: Protection of Darjeeling Tea’, paper presented at the World Wide Symposium on Geographical Indications, San Francisco, 9-11 July 2003 [WIPO/GEO/SFO/03/8]. back to text
2.- Source: N. K. Das, ‘Geographical Indications: Protection of Darjeeling Tea’, WIPO Symposium on Geographical Indications, San Francisco, 11 july 2003. back to text
3.- See Tea Board of India, ‘Experience of Indian Tea Producers’. back to text
4.- Ibid. back to text
5.- Ibid. back to text
* Research Professor, Indian Law Institute, New Delhi. Formerly Professor, Chairman and Dean, Faculty of Law, Kurukshetra University (India), and University of Calabar (Nigeria). The author acknowledges with thanks the help received from the Tea Board of India for providing requisite information.