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How Tea Board won GI battle

Prohibition of use of Darjeeling GI in non-tea goods and services in France

— FILE PHOTO

PRESERVING THE AROMA: A plantation worker plucks tea leaves during a hot day in Darjeeling, 80 km from Siliguri.

THE TEA Board has recently scored a landmark victory protecting GI (geographical indication) registration of Darjeeling tea in France and in the U.S. In the U.S., the victory came after a prolonged battle beginning in 2000 and ending in 2006 after the expiry of time for appeal. In France, where it was not even being used for tea, the fight was stiffer and ended after three years in 2006, with the Tea Board being authorised to publish the order extracts at the cost of the party it was fighting against.

The case in France involved one Jean-Luc Dusong who was found to be using the name Darjeeling with a device of a teapot on goods and services, including artworks, engraving, books, journals, communication and consultancy. The Tea Board had lost the first round of its battle with the Court of the First Instance in Paris (akin to a trial court here), but India tasted success when the Court of Appeals in Paris (which may be equivalent to a High Court) upheld the Tea Board's claim that the use of the word Darjeeling with the teapot logo, and its registration was a violation of the rights represented by the Tea Board in respect of GI Darjeeling for tea.

A geographical indication is a name or sign used on goods to indicate and certify that these originate from a specific geographical origin and possess certain characteristics or reputation which is essentially attributable to the said geographical origin. Being a collective right, a GI belongs to all the stakeholders in the product concerned and is, thus, distinguishable from a trademark, which is a private monopoly right vested in a proprietor to distinguish his goods from those of others.

While objecting to the registration in France through a civil suit, the Tea Board argued that the use would deceive customers into believing that these products and services, though not related to tea, would somehow be associated with the superior quality and reputation enjoyed by Darjeeling tea. The Tea Board lost the appeal.

On November 22, 2006, the Court of Appeal reversed the Court of First Instance's ruling saying that on the basis of various materials, scholarly works and encyclopedias placed before it by the Tea Board, it is evident that Darjeeling qualified as a GI for a tea having unique attributes and originating in Darjeeling in India and hence was entitled to be protected as such within the meaning of the TRIPS agreement and the Paris Convention.

That although Mr. Dusong was using the mark on non-tea goods and services, he was still riding on the superior reputation of Darjeeling Tea and benefiting from the same. This amounted to an act of unfair competition under Article 10bis of the Paris Convention, which calls for sanctions against acts which are contrary to honest industrial and commercial uses and to which both India and France are signatories.

It was held that the name Darjeeling could not be registered as a trademark and only producers, traders and exporters from this region can benefit from this origin.

Based on these observations, the Court of Appeal nullified the registration granted to Mr. Dusong with the teapot device, and injuncted him from using the name Darjeeling in any context whatsoever. It further authorised the Tea Board to have the order or its extracts published in three French or foreign newspapers or journals of its choice at the expense of Mr. Dusong up to a maximum of 5,000 euros. It also directed Mr. Dusong to pay costs up to 2,000 euros to the Tea Board, according to a Tea Board release.

While this has been among the more spectacular success stories of the Tea Board's attempts to protect GI rights of Darjeeling tea, it was also successful in the U.S. in a case where the decision of the Trade Mark Trial and Appeal Board (TTAB) is considered to be a precedent and is particularly important for governments interested in protecting geographical indications in the U.S. The TTAB, sources said, is the authority in the U.S. in charge of trade disputes related to intellectual property rights (IPRs).

`Republic of Tea'

In this case, the Tea Board managed to get rejected the trademark application for Darjeeling Noveau in the name of `Republic of Tea' (ROT) on the basis of its geographical certification marks for Darjeeling word and logo. ROT is the name of a well-established tea company involved in tea imports and packaging.

Tea Board officials said that in its decision the TTAB had made several observations which were important with regard to the protection of geographical certification marks in the U.S. The TTAB held that `ROT' had not sustained its burden of demonstrating that consumers view Darjeeling tea as a generic type, as opposed to tea from the Darjeeling region of India. It also recognised Tea Board's efforts in maintaining control of the mark and protecting its value as GI and held that regulations and the licensing programme put in place by the Tea Board constitute adequate provisions for control.

It may be mentioned that at a legal level, the Tea Board is the owner of all IPRs in Darjeeling word and logo both in common law and under the provisions of certain Indian statutes like the Trade Marks Act 1999, the Geographical Indication of Goods (Registration and Protection) Act 1999 and the Copyright Act 1957.

Use of Darjeeling word and logo is protected as geographical indications in India and as Certification Trade Marks in the U.K., the U.S. and India. A major development in this area is the registration of the Darjeeling word as a community collective mark in the European Union.

The sources said that besides registering Darjeeling under the relevant laws in importing countries, the Tea Board had been fighting trademark applications for Darjeeling tea in different parts of the world.

In 1998, it appointed world wide watch agency Compumark to monitor conflicting marks globally and in the last couple of years several instances of misuse and attempted registrations had been found and challenged by the Tea Board.

Indrani Dutta

In Kolkata

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