geographical indications: more than a marketing tool part – i a presentation by rajendra kumar...

GEOGRAPHICAL INDICATIONS: GEOGRAPHICAL INDICATIONS: MORE THAN A MARKETING MORE THAN A MARKETING TOOLTOOL

PART – IPART – I

A PRESENTATION BYA PRESENTATION BYRAJENDRA KUMARRAJENDRA KUMARPARTNERPARTNERK&S PARTNERS, NEW DELHIK&S PARTNERS, NEW DELHIAPRIL 6, 2010APRIL 6, 2010

Lets first talk about concepts and Lets first talk about concepts and

forms of Intellectual Propertyforms of Intellectual Property

Common Misconceptions or Common Misconceptions or Wrong DescriptionsWrong Descriptions Many times we read and hear:Many times we read and hear:

– Patent this brand Patent this brand – Copyright this IdeaCopyright this Idea– This patent gives Ricetec exclusive This patent gives Ricetec exclusive

right to use the name “Basmati” right to use the name “Basmati” – Neem has been patented Neem has been patented – Government of India to protect Basmati Government of India to protect Basmati

and Darjeeling trademarks and Darjeeling trademarks – All these reveal confusion about IP All these reveal confusion about IP

rightsrights

FORMS OF IPRFORMS OF IPR

IPR

Trademarks or

Brands

Copyright

Trade Secrets

Patents

Designs

Plant Varieties Act

Geographical Indication

What are PatentsWhat are Patents

Patent Patent ––– An industrially useful invention An industrially useful invention – Which is new and not part of the public Which is new and not part of the public

domain domain – Confers upon the patentee monopoly in Confers upon the patentee monopoly in

the use of the invention for a fixed period the use of the invention for a fixed period – Protects the workable idea and the Protects the workable idea and the

concept of an industrially useful inventionconcept of an industrially useful invention

What Does “Copyright” MeanWhat Does “Copyright” Mean

Copyright- Copyright-

– Protects the expression of an idea Protects the expression of an idea rather than the idea itself rather than the idea itself

– Gives to a copyright owner excusive Gives to a copyright owner excusive right to a bundle of rights in the right to a bundle of rights in the protected work to the exclusion of all protected work to the exclusion of all others others

WhatWhat are Industrial are Industrial DesignsDesigns

Design- Design-

– Protects the external aesthetic / Protects the external aesthetic / ornamental appearance or ornamental appearance or characteristics of a product characteristics of a product

– Judged solely by the eye of the observer Judged solely by the eye of the observer

What are TrademarksWhat are Trademarks Trademark- Trademark-

– Is a word / device / sign / symbol / Is a word / device / sign / symbol / combinations thereof and is capable of combinations thereof and is capable of graphical representation graphical representation

– Indicates the origin of goods or services Indicates the origin of goods or services and distinguishes these from those of and distinguishes these from those of others others Coca Cola Coca Cola PepsiPepsi Godrej Godrej MicrosoftMicrosoft Dabur Dabur Colgate Colgate

TRADEMARKSTRADEMARKS

SAMSUNG, SONY, HONDA, SAMSUNG, SONY, HONDA, HYUNDAI, HAIERHYUNDAI, HAIER

What are Geographical What are Geographical IndicationsIndications

Geographical Indications Geographical Indications – This is a collective right as opposed to a This is a collective right as opposed to a

private right private right – Identifies the product as originating in a Identifies the product as originating in a

country or region thereof country or region thereof – Whose quality, reputation or other Whose quality, reputation or other

characteristics are attributable to its characteristics are attributable to its geographical origin geographical origin

BASMATI, DARJEELING TEA, CHAMPAGNE, BASMATI, DARJEELING TEA, CHAMPAGNE, SCOTCH WHISKY, HAVANA CIGARS, SCOTCH WHISKY, HAVANA CIGARS, ALPHONSO MANGOES ALPHONSO MANGOES

TYPES OF GIsTYPES OF GIs

GEOGRAPHICAL INDICATIONGEOGRAPHICAL INDICATION

Product name indicates the originProduct name indicates the origin SCOTCH whiskySCOTCH whisky DARJEELING teaDARJEELING tea HAVANA cigars, HAVANA cigars,

Product is traditionally associated with a Product is traditionally associated with a particular regionparticular region

ALPHONSOALPHONSO FENIFENI BASMATI BASMATI

STRATEGIC USE OF STRATEGIC USE OF TRADEMARKSTRADEMARKS Macro economic function- Macro economic function-

identifies productidentifies product

Accountability to customers Accountability to customers

Strategic marketing role in Strategic marketing role in individual enterprisesindividual enterprises

Consumer advertising to Consumer advertising to promote product salepromote product sale

Cements consumer loyalty Cements consumer loyalty

STRATEGIC USE OF STRATEGIC USE OF TRADEMARKSTRADEMARKS Trademarks help owners to:-Trademarks help owners to:-

Increase profitability

Respond to unfair competition

Expand and maintain market share

Differentiate products

Introduce new product lines

Gain royalties through licensing programs

Support strategic partnership & marketing alliances

Justify corporate valuation in financial transactions

VECTORS OF NATIONAL VECTORS OF NATIONAL IDENTITYIDENTITY

Countries evoked by:- Coca Cola, Marlboro, Nike

Ferrari, Gucci, Benetton

Chanel, Dior

Sony, Honda

Trademarks convey positive commercial appeal about country of origin

CASE STUDIESCASE STUDIES JAPAN

Post world war II- “Made in Japan”

SONY – Latin Name - Chosen in 1954

Today Japan known for high quality electronic goods

One of the per capita richest countries

CASE STUDIESCASE STUDIES

KOREA1960s - low GNP country

Today eleventh largest economy in the world

Major brand exporting country

SAMSUNG, HYUNDAI – technical competence, manufacturing excellence, modernity

WHAT MADE THEM SUCCEED?WHAT MADE THEM SUCCEED? Small countries - export-led

economic development Developing domestic expertise

– controlled external trade

State supported industrial development

State supported export of branded domestic products

Quality recognised as a benchmark

STRATEGIC USE OF STRATEGIC USE OF GEOGRAPHICAL GEOGRAPHICAL INDICATIONSINDICATIONS

Like any other IPR, a GI can also be Like any other IPR, a GI can also be economically exploited economically exploited

Provides benefit to all stake holders Provides benefit to all stake holders Contributes to human and social Contributes to human and social

development of community development of community Can be used as a means to protect Can be used as a means to protect

some traditional knowledge and some traditional knowledge and traditional cultural expressions traditional cultural expressions (Madhubani paintings, Aranmula (Madhubani paintings, Aranmula metal mirror & other products of metal mirror & other products of handicrafts)handicrafts)


Helps in preventing migration of Helps in preventing migration of the art / craft out of the region the art / craft out of the region by keeping the artisans rooted in by keeping the artisans rooted in the regionthe region

Acts as an ambassador of Acts as an ambassador of tourism for the GI region (E.g., tourism for the GI region (E.g., Champagne tours, Scotch Champagne tours, Scotch Whisky trails, Napa Valley Wine Whisky trails, Napa Valley Wine tours)tours)


PROTECTION OF GIs IMPORTANTPROTECTION OF GIs IMPORTANT::Promotes products having certain Promotes products having certain

characteristics of considerable characteristics of considerable benefit to the rural economybenefit to the rural economy

Ensures the supply chain integrity Ensures the supply chain integrity of GI products of GI products

Facilitates distribution and sale of Facilitates distribution and sale of GI products – especially relevant to GI products – especially relevant to developing countries whose developing countries whose markets are in industrialized markets are in industrialized countriescountries


PROTECTION OF GIs IMPORTANTPROTECTION OF GIs IMPORTANT::Improves the income of farmers and Improves the income of farmers and

retains the rural population in less retains the rural population in less favoured remote areasfavoured remote areas

Protects consumers against acts of Protects consumers against acts of unfair competition by ensuing unfair competition by ensuing correct labeling informationcorrect labeling information

Acts as a vehicle for producers to Acts as a vehicle for producers to compete on quality rather than compete on quality rather than quantityquantity


Studies in Europe have shown Studies in Europe have shown enhanced economic benefits for enhanced economic benefits for origin guaranteed productsorigin guaranteed products French GI cheeses: a premium of 2 EuroFrench GI cheeses: a premium of 2 Euro Italian Toscano oil : a premium of 20%Italian Toscano oil : a premium of 20% French Poulet de Bresse : a premium of French Poulet de Bresse : a premium of

4%4% Producers of milk for ‘Comte’ cheese: a Producers of milk for ‘Comte’ cheese: a

premium of 10%premium of 10% These products are sold at a premium These products are sold at a premium

today both in the domestic and today both in the domestic and international marketsinternational markets

How do we unlock the How do we unlock the wealth?wealth?

Legal:Legal:Need for protection of GI at Need for protection of GI at

domestic and international domestic and international levelslevels

Need for integrity and sanctity Need for integrity and sanctity of supply chain through of supply chain through certification at sourcecertification at source

Need for pro-active and Need for pro-active and defensive steps to prevent defensive steps to prevent usurpation of GIsusurpation of GIs

Colombian Coffee Case Colombian Coffee Case StudyStudy Colombian coffeeColombian coffee– Coffee produced in ColombiaCoffee produced in Colombia– Rich taste and aromaRich taste and aroma– Handpicked berries Handpicked berries – Soaked in cold mountain water for 24 Soaked in cold mountain water for 24

hourshours– Carefully washed in long concrete Carefully washed in long concrete

troughs troughs – Dried on great open terracesDried on great open terraces

Colombian Coffee Case Colombian Coffee Case StudyStudy Colombian Coffee Federation (NFC)Colombian Coffee Federation (NFC)

– Owned & controlled by over 50,000 Owned & controlled by over 50,000 Columbia’s coffee farmersColumbia’s coffee farmers

– Markets & advertises to promote Markets & advertises to promote Colombian Coffee around the world Colombian Coffee around the world by way of the Juan Valdez logoby way of the Juan Valdez logo

– Lays down rigorous quality control Lays down rigorous quality control standardsstandards

– Certifies 100% Colombian Coffee with Certifies 100% Colombian Coffee with no other origins blended inno other origins blended in

Colombian Coffee Case Colombian Coffee Case StudyStudy

Colombian Coffee Case Colombian Coffee Case StudyStudy Advertising historyAdvertising history

– Early 60’s -to 80’s Initial Educational Early 60’s -to 80’s Initial Educational Campaign to create awareness of Campaign to create awareness of Colombian Coffee’s superiorityColombian Coffee’s superiority

– Early 80’s - Image Campaign - to Early 80’s - Image Campaign - to create a positive image of Colombian create a positive image of Colombian CoffeeCoffee

– The 100% Colombian Coffee The 100% Colombian Coffee Campaign- The Juan Valdez logo Campaign- The Juan Valdez logo developed in March 1981developed in March 1981

– The right to use the logo is strictly The right to use the logo is strictly enforced as to the manner and form enforced as to the manner and form of use of use


– Juan Valdez (the quintessential Juan Valdez (the quintessential cafetero/ coffee farmer), his mule cafetero/ coffee farmer), his mule and the Colombian mountains in the and the Colombian mountains in the backgroundbackground

– Serves as a seal of 100% guaranteed Serves as a seal of 100% guaranteed Colombian Coffee as approved by Colombian Coffee as approved by NFCNFC

– Logo was introduced to print & Logo was introduced to print & consumer spot television advertisingconsumer spot television advertising

– 1983 - the logo was included in all 1983 - the logo was included in all creative material on a national basiscreative material on a national basis


– 1990’s - The Grab Life by the 1990’s - The Grab Life by the Beans Campaign to reflect the Beans Campaign to reflect the Espresso Bar culture of young Espresso Bar culture of young coffee drinkers coffee drinkers

– Currently all three campaigns Currently all three campaigns run simultaneously to run simultaneously to compliment and enhance the compliment and enhance the brand equity of Colombian brand equity of Colombian CoffeeCoffee

Colombian Coffee Case Colombian Coffee Case StudyStudy How has the protection How has the protection

benefited the poor benefited the poor cafetero? cafetero? – Standard of living of more than 4 Standard of living of more than 4

million (around 15% of the total million (around 15% of the total population) Colombians population) Colombians improvedimproved

– Thousands of miles of access Thousands of miles of access roads built to the production roads built to the production areaarea


– Safe and adequate water supply Safe and adequate water supply and electricityand electricity

– Schools for the cafeteros’ childrenSchools for the cafeteros’ children– Health centersHealth centers– Overall improved living conditionsOverall improved living conditions– Today, Colombia’s 300,000 small Today, Colombia’s 300,000 small

independent coffee growers are no independent coffee growers are no longer alone in the vast world of longer alone in the vast world of international tradeinternational trade


– And Colombia is now getting And Colombia is now getting known for its coffee tourism!known for its coffee tourism!

– Since the early 1990s, coffee Since the early 1990s, coffee farms are being opened to farms are being opened to visitors for a fee.visitors for a fee.

– Guided tours laced with Guided tours laced with activities such as coffee activities such as coffee roasting, coffee cupping etc. roasting, coffee cupping etc.

Phu Quoc Fish Sauce Phu Quoc Fish Sauce A case study from Vietnam A case study from Vietnam

– Fermented fish sauces considered a Fermented fish sauces considered a delicacy in many East Asian delicacy in many East Asian countriescountries

– Nuoc Mam Nuoc Mam from Vietnam’s largest from Vietnam’s largest island called Phu Quoc considered island called Phu Quoc considered among most famousamong most famous

– Phu Quoc in the Gulf of Thailand Phu Quoc in the Gulf of Thailand surrounded by waters rich in silvery, surrounded by waters rich in silvery, translucent, long-jawed anchoviestranslucent, long-jawed anchovies

– Traditional recipe is secretly Traditional recipe is secretly guarded by the Phu Quoc Islanders guarded by the Phu Quoc Islanders

Phu Quoc Fish Sauce Phu Quoc Fish Sauce

A case study from Vietnam A case study from Vietnam

– However, the process lasting almost However, the process lasting almost one year essentially involves: one year essentially involves: catching, layering and salting catching, layering and salting anchovies, decomposing them in anchovies, decomposing them in special wooden casks that are said special wooden casks that are said to flavour the sauceto flavour the sauce

– Island of Phu Quoc has about 90 fish Island of Phu Quoc has about 90 fish sauce enterprises – collectively sauce enterprises – collectively producing 10 million liters of sauce producing 10 million liters of sauce each yeareach year

– EU alone a major buyer of around EU alone a major buyer of around one million liter one million liter


– Appellation of origin under Appellation of origin under Regulation 510/206 soughtRegulation 510/206 sought

– Ever since implementation of a Ever since implementation of a geographical indication scheme in geographical indication scheme in 2001:2001: Prices in the home market increased Prices in the home market increased

from 0.5 to 1.5 Euro per literfrom 0.5 to 1.5 Euro per liter Attracted Unilever under a ten-year Attracted Unilever under a ten-year

contract to team up with local fish sauce contract to team up with local fish sauce producers in Phu Quoc for upgradation producers in Phu Quoc for upgradation of processing and bottling plant to of processing and bottling plant to international hygiene standardsinternational hygiene standards


Resulting in a world class product under Resulting in a world class product under Unilever’s Knorr Trademark along with Phu Unilever’s Knorr Trademark along with Phu Quoc as a mark of originQuoc as a mark of origin

– Unilever committed to contribute to Unilever committed to contribute to secondary ventures:secondary ventures:

Building a museum of fish sauce on the Building a museum of fish sauce on the islandisland

Research by scientists in anchovies to Research by scientists in anchovies to suggest patterns of sustainable harvest of suggest patterns of sustainable harvest of these tiny fishthese tiny fish

– The Phu Quoc example is a precedent The Phu Quoc example is a precedent for developing countries to exploit/ for developing countries to exploit/ preserve their undermarketed preserve their undermarketed traditional products sold under GIstraditional products sold under GIs

END OF PART - I END OF PART - I

GEOGRAPHICAL INDICATIONS: GEOGRAPHICAL INDICATIONS: MORE THAN A MARKETING MORE THAN A MARKETING TOOLTOOL

PART –IIPART –II

Indian ExperienceIndian Experience

Indian ExperienceIndian Experience

– GIs protected in India through:GIs protected in India through: Certification Trademarks under the Certification Trademarks under the

Trade Marks Act, 1999 (and the Trade Marks Act, 1999 (and the erstwhile repealed Trade Marks Act of erstwhile repealed Trade Marks Act of 1958)1958)

Sui Generis GI lawSui Generis GI law Passing-off actionsPassing-off actions

Statutory protection in Statutory protection in India - common elementsIndia - common elements

– Collective body with locus standiCollective body with locus standi– Specification / characteristics of the Specification / characteristics of the

productproduct– Whether geographical or traditional Whether geographical or traditional

namename– Type of goodsType of goods– Proof of origin – historical recordsProof of origin – historical records– Method of productionMethod of production– Inspection bodyInspection body– Geographical area of production and Geographical area of production and

mapmap

Some important provisions of the Some important provisions of the GI lawGI law

– Section 2(1) (e): defines a Section 2(1) (e): defines a ‘geographical indication’ in very broad ‘geographical indication’ in very broad terms on the TRIPS 22.1 definition terms on the TRIPS 22.1 definition and includes agricultural goods, and includes agricultural goods, natural goods or manufactured goodsnatural goods or manufactured goods

– Traditional cultural expressions Traditional cultural expressions (TCEs) in the field of food stuffs, (TCEs) in the field of food stuffs, products of handicraft or traditional products of handicraft or traditional textiles registrable subject mattertextiles registrable subject matter

Some important provisions of Some important provisions of the GI lawthe GI law

– Section 11(1): An applicant can Section 11(1): An applicant can be:be: any association of persons or any association of persons or

producers or producers or authority established by or under authority established by or under

any law for the time being in force any law for the time being in force representing the interest of the representing the interest of the producers of the concerned goodsproducers of the concerned goods

Civil and criminal Civil and criminal remediesremedies

– Both civil and criminal remedies are Both civil and criminal remedies are available to the rights holderavailable to the rights holder

– In a civil action the rights holder may In a civil action the rights holder may maintain an infringement action maintain an infringement action based on a registered GI and a based on a registered GI and a passing-off action based on common passing-off action based on common law rightslaw rights

– The law classifies offenses as The law classifies offenses as cognizable with powers of search and cognizable with powers of search and seizure vested in the police both seizure vested in the police both directly and under a warrant issued directly and under a warrant issued by a magistrateby a magistrate

An Indian Success StoryAn Indian Success Story

DARJEELING DARJEELING

TEATEA

THE DARJEELING TEA THE DARJEELING TEA STORYSTORY

Darjeeling tea goes back to 1835Darjeeling tea goes back to 1835Statutorily controlled by the Government Statutorily controlled by the Government

as part of the Tea industry from 1933 as part of the Tea industry from 1933 under various enactments culminating in under various enactments culminating in the Tea Act, 1953 the Tea Act, 1953

The Tea Board is vested with the The Tea Board 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 orders various orders

Cultivated currently in 87 designated Cultivated currently in 87 designated gardens in the Darjeeling district spread gardens in the Darjeeling district spread over 17800 hectares of landover 17800 hectares of land

THE DARJEELING TEA THE DARJEELING TEA STORYSTORY

The Darjeeling tea industryThe Darjeeling tea industry Employing over 52000 people on permanent basisEmploying over 52000 people on permanent basis Additional 15000 persons engaged during plucking Additional 15000 persons engaged during plucking

season – March to Novemberseason – March to November 60% of the work force is women employed on family 60% of the work force is women employed on family

basisbasis Income of a garden worker half in the form of cash Income of a garden worker half in the form of cash

and the other half by way of perquisites with access and the other half by way of perquisites with access to free accommodation, subsidies cereal ration and to free accommodation, subsidies cereal ration and free medical benefitsfree medical benefits

As against the world tea production of 3750 million As against the world tea production of 3750 million kgs for the year 2009, India’s tea production kgs for the year 2009, India’s tea production accounted for 981 million kgsaccounted for 981 million kgs

Darjeeling tea accounted for 9.5 million kgsDarjeeling tea accounted for 9.5 million kgs

THE DARJEELING TEA THE DARJEELING TEA STORYSTORY Protection of Darjeeling tea:Protection of Darjeeling tea:

Beneficial for the plantation Beneficial for the plantation workerworker

Would ensure better prices Would ensure better prices Better economic health of the Better economic health of the

industryindustrySustainable educational and Sustainable educational and

health systemshealth systemsA better quality of lifeA better quality of life

WELFARE ACTIVITIES WELFARE ACTIVITIES BY TEA BOARDBY TEA BOARD Grant of educational stipend to Grant of educational stipend to

wards of plantation workers wards of plantation workers Grant of financial assistance for Grant of financial assistance for

construction / expansion of school construction / expansion of school and college buildingsand college buildings

Capital grants for setting up Capital grants for setting up sports facilities in tea plantation sports facilities in tea plantation districts districts

THE DARJEELING TEA THE DARJEELING TEA STORYSTORY LEGAL PROTECTIONLEGAL PROTECTION

1997 - 1997 - Benelux Countries (Belgium, Benelux Countries (Belgium, Netherlands, Luxembourg) – Collective Netherlands, Luxembourg) – Collective mark protection for DARJEELING logomark protection for DARJEELING logo

1998 – 1998 – World Wide Watch agency World Wide Watch agency CompuMark CompuMark (now called (now called Thompson) appointed to monitor Thompson) appointed to monitor conflicting marks.conflicting marks.

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

Instances of attempted registrations foundInstances of attempted registrations found Some challenged through oppositions & cancellations Some challenged through oppositions & cancellations

and sometimes negotiations.and sometimes negotiations.

THE DARJEELING TEA THE DARJEELING TEA STORYSTORY LEGAL PROTECTIONLEGAL PROTECTION1998 – 1998 – UK - Certification mark UK - Certification mark

protection for protection for DARJEELING wordDARJEELING word2002 - 2002 - USA – Certification mark USA – Certification mark

protection for protection for DARJEELING word DARJEELING word 2003 –2003 – Russia – Trade mark registration Russia – Trade mark registration

for for DARJEELING wordDARJEELING word2003 -2003 - India - GI application filed for India - GI application filed for

DARJEELING word & logo DARJEELING word & logo marks, since marks, since registered in July 2004registered in July 2004

THE DARJEELING TEA THE DARJEELING TEA STORYSTORY LEGAL PROTECTIONLEGAL PROTECTION2004 - 2004 - India – Copyright registration India – Copyright registration

obtained for obtained for DARJEELING logo DARJEELING logo 2004 - 2004 - Japan – Collective mark Japan – Collective mark

application filed application filed for DARJEELING for DARJEELING wordword

2004 -2004 - Australia – Certification mark Australia – Certification mark registrations registrations for DARJEELING for DARJEELING word and logo marks word and logo marks granted granted

2004 -2004 - Germany – Collective mark Germany – Collective mark application application filed for DARJEELING filed for DARJEELING wordword

THE DARJEELING TEA THE DARJEELING TEA STORYSTORY LEGAL PROTECTIONLEGAL PROTECTION2007 – On November 12, 2007, 2007 – On November 12, 2007,

DARJEELING applied for under DARJEELING applied for under ECR 510/2006 as a PGIECR 510/2006 as a PGI


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

• FranceFrance• Applicant Dusong adopted the Applicant Dusong adopted the

following mark in respect of goods in following mark in respect of goods in classes 16, 35 & 41classes 16, 35 & 41


• While the Tribunal de Grand While the Tribunal de Grand Instance rejected Tea Board’s claim, Instance rejected Tea Board’s claim, the Court of Appeal Paris upheld the the Court of Appeal Paris upheld the samesame

• 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 writ large from the fact that he used a tea pot device along with the marka tea pot device along with the mark


• The court also imposed heavy costs The court also imposed heavy costs to the tune of Euros 2000 on Mr. to the tune of Euros 2000 on Mr. Dusong and directed him at his Dusong and directed him at his expense to publish the decision in expense to publish the decision in three newspapers (English or three newspapers (English or French) of the Tea Board’s Choice French) of the Tea Board’s Choice within a total of Euros 5000.within a total of Euros 5000.


• USAUSA• DARJEELING v. DARJEELING NOUVEAUDARJEELING v. DARJEELING NOUVEAU• Opposition filed by Tea Board before the Opposition filed by Tea Board before the

Trademark Trial and Appellate Board Trademark Trial and Appellate Board (TTAB) USA(TTAB) USA

• Based on its US CTM registrations, Tea Based on its US CTM registrations, Tea Board demanded that the mark ‘Darjeeling Board demanded that the mark ‘Darjeeling Nouveau’ by Republic of Tea (ROT) be Nouveau’ by Republic of Tea (ROT) be refusedrefused

• ROT filed a counterclaim that Tea Board’s ROT filed a counterclaim that Tea Board’s CTM registrations be cancelled on alleged CTM registrations be cancelled on alleged grounds of genericnessgrounds of genericness


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

• Darjeeling is an inherently distinctive Darjeeling is an inherently distinctive certification trademark indicating certification trademark indicating geographic origingeographic 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 genericness The test for determining genericness of a mark is its primary significance of a mark is its primary significance to the relevant publicto the relevant public

THE DARJEELING TEA STORYTHE DARJEELING TEA STORY LEGAL PROTECTIONLEGAL PROTECTION

• TAIWAN – November 18, 2009TAIWAN – November 18, 2009• Darjeeling registered in Taiwan by the French company, Darjeeling registered in Taiwan by the French company,

DELTA Lingerie in Class 25;DELTA Lingerie in Class 25;

• The Tea Board objected to the registration based on its The Tea Board objected to the registration based on its rights in the Darjeeling word and logo marks for tea; rights in the Darjeeling word and logo marks for tea;

• On November 18, 2009 the Taiwan Intellectual Property On November 18, 2009 the Taiwan Intellectual Property Office (TIPO) cancelled the registration, holding:Office (TIPO) cancelled the registration, holding:

- Darjeeling is a well known mark of origin represented by - Darjeeling is a well known mark of origin represented by the geographical reach of registration, use, promotional the geographical reach of registration, use, promotional and advertising activities world wideand advertising activities world wide

- DELTA Lingerie’s mark was highly similar to the - DELTA Lingerie’s mark was highly similar to the Darjeeling CTM owned by Tea Board Darjeeling CTM owned by Tea Board

- The use of DELTA Lingerie’s mark in respect of the similar - The use of DELTA Lingerie’s mark in respect of the similar goods would be diluted of the Tea Board’s strong goods would be diluted of the Tea Board’s strong Darjeeling Certification Mark.Darjeeling Certification Mark.

THE DARJEELING TEA THE DARJEELING TEA STORYSTORY COMMRERCIAL ANGLECOMMRERCIAL ANGLE

COMMERCIAL ANGLECOMMERCIAL ANGLE• Commercial angle is as important Commercial angle is as important

to GI protection as legal angleto GI protection as legal angle• What constitutes commercial What constitutes commercial

angle?angle?• Projection and promotion of the GI Projection and promotion of the GI

through advertisementsthrough advertisements• Need for building brand equity Need for building brand equity

through promotional campaigns in through promotional campaigns in diverse marketsdiverse markets

THE DARJEELING TEA THE DARJEELING TEA STORYSTORY COMMRERCIAL ANGLECOMMRERCIAL ANGLE

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

foreign jurisdictionsforeign jurisdictions• Organizing seminars on IPRS and Organizing seminars on IPRS and

in particular GIs in particular GIs • Issuing advertisements in the Issuing advertisements in the

national and international media national and international media promoting Darjeelingpromoting Darjeeling

• Creating awarenessCreating awareness

Trade Supply Chain Trade Supply Chain Integrity SystemIntegrity System Introduced a trade chain management Introduced a trade chain management

system for surveillance and monitoring of system for surveillance and monitoring of the supply chain and addressing traceability the supply chain and addressing traceability issues in the Darjeeling tea trade chain.issues in the Darjeeling tea trade chain.

Two computerized data Two computerized data collection centers havecollection centers havebeen setup in Darjeelingbeen setup in Darjeelingand Kolkata, connectedand Kolkata, connectedthrough internet enabledthrough internet enabledservices.services.

Trade Supply Chain Trade Supply Chain Integrity SystemIntegrity System The system entails computerized collection and The system entails computerized collection and

validation of all plantation and processing related validation of all plantation and processing related data, namely;data, namely;– Daily green leaf plucking recordsDaily green leaf plucking records– Daily area plucked recordsDaily area plucked records– Daily Manpower used recordsDaily Manpower used records– Daily green leaf transfer/purchase recordsDaily green leaf transfer/purchase records– Daily processing recordsDaily processing records– Daily invoice entry recordsDaily invoice entry records– Daily dispatch recordsDaily dispatch records

All 87 registered Gardens have been provided All 87 registered Gardens have been provided with customized software for the data entry and with customized software for the data entry and submissionsubmission

Trade Supply Chain AuditTrade Supply Chain Audit

Appointed an independent certification Appointed an independent certification agency to conduct trade chain audit to check agency to conduct trade chain audit to check and validate the authenticity of the data and validate the authenticity of the data collected through the Trade Supply Chain collected through the Trade Supply Chain Integrity System.Integrity System.

The certification agency will conduct onsite The certification agency will conduct onsite checking and verification of all the data checking and verification of all the data submitted by all entities in the trade chain.submitted by all entities in the trade chain.

Approximately 33 % of the all entities Approximately 33 % of the all entities registered under each category will be audited registered under each category will be audited each year, with every entity undergoing a each year, with every entity undergoing a complete verification once in 3 years. complete verification once in 3 years.

Trade Supply Chain AuditTrade Supply Chain Audit

Annually 10% of all the registered Annually 10% of all the registered entities will be subject to random and entities will be subject to random and totally unannounced spot checks.totally unannounced spot checks.

Full verification/spot-check will be Full verification/spot-check will be conducted each year on the basis of a conducted each year on the basis of a risk analysis. risk analysis.

All data/information/material All data/information/material obtained/generated during the audits obtained/generated during the audits will be kept strictly confidential.will be kept strictly confidential.

Tea Estate Factory

Tea Estate Factory

Tea Estate Tea EstateTea Estate

Exporter/ Trader’s Warehouse and/Processing unit

Estate company’sWarehouse/Processing unit

Auction broker(no physical handling or custody of materials

Finaldomestic Handler

Second overseas Handler

FirstOverseasHandler

Final Exporter/Domestic buyer’s warehouse

SUPPLY

CHAIN

All Darjeeling All Darjeeling Tea leaving Tea leaving

the shores of the shores of India today is India today is guaranteed guaranteed

100% 100% Darjeeling Darjeeling

TeaTea

IMPACT OF GI PROTECTION IMPACT OF GI PROTECTION ON DARJEELING TEA TRADEON DARJEELING TEA TRADE

Increased number of certificate of origin Increased number of certificate of origin (COO) issued (1924 in 204 to 2095 in (COO) issued (1924 in 204 to 2095 in 2008) and destinations (35 in 2004 to 43 2008) and destinations (35 in 2004 to 43 in 2008)in 2008)

2000-2007 period showed less 2000-2007 period showed less fluctuations in Darjeeling prices at fluctuations in Darjeeling prices at auctionsauctions

Overall brokens and fannings have moved Overall brokens and fannings have moved up steadily up steadily

Entrepreneurs bullish on the Darjeeling Entrepreneurs bullish on the Darjeeling tea tradetea trade

IMPACT OF GI PROTECTION IMPACT OF GI PROTECTION ON DARJEELING TEA TRADEON DARJEELING TEA TRADE

All 87 tea estates in Darjeeling All 87 tea estates in Darjeeling commercially operational today with a commercially operational today with a consolidation of ownership in the consolidation of ownership in the Darjeeling Tea industry over the last 4 Darjeeling Tea industry over the last 4 yearsyears

Adherence to regulations and labeling Adherence to regulations and labeling guidelinesguidelines

Launch of origin brands (Hindustan Launch of origin brands (Hindustan Unilever Limited withdrew its famous Unilever Limited withdrew its famous Lipton Green Label brand and Lipton Green Label brand and introdued Lipton Darjeeling in Indiaintrodued Lipton Darjeeling in India

‘‘Aarogyappacha’Aarogyappacha’The Healthy Green OneThe Healthy Green One

A herb that grows in the Western A herb that grows in the Western Ghats in Southern Kerala;Ghats in Southern Kerala;

Having medicinal and other Having medicinal and other properties known only to the Kani properties known only to the Kani tribe;tribe;

In December 1987, a group of In December 1987, a group of scientists on a botanical expedition scientists on a botanical expedition accompanied by a few members of the accompanied by a few members of the Kani tribe;Kani tribe;

Aarogyappacha’Aarogyappacha’The Healthy Green OneThe Healthy Green One

During the arduous trek the Kanis constantly During the arduous trek the Kanis constantly keeping themselves energetic and agile by keeping themselves energetic and agile by exploring and eating some fruits (offered these exploring and eating some fruits (offered these fruits, scientists felt a sudden flush of energy fruits, scientists felt a sudden flush of energy and strength)and strength)

The Kanis were reluctant to reveal the source of The Kanis were reluctant to reveal the source of these fruits considered sacred information, these fruits considered sacred information, however, were persuaded to reveal the origin however, were persuaded to reveal the origin for scientific research;for scientific research;

Detailed scientific investigation of the plant Detailed scientific investigation of the plant including chemical screening undertaken and including chemical screening undertaken and showed the leaves to possess anti-stress, anti-showed the leaves to possess anti-stress, anti-hepatotoxic and immunodulatory properties;hepatotoxic and immunodulatory properties;

Aarogyappacha’Aarogyappacha’The Healthy Green OneThe Healthy Green One

The findings led to the development of a drug Jeevani and a The findings led to the development of a drug Jeevani and a licence granted to a private company for a fee of 1 Million licence granted to a private company for a fee of 1 Million Indian Rupees;Indian Rupees;

Most importantly the Kanis were granted 50% of the Most importantly the Kanis were granted 50% of the licence fee as well as 50% of the royalty obtained by the licence fee as well as 50% of the royalty obtained by the Tropical Botanic Garden & Research Institute (TBGRI);Tropical Botanic Garden & Research Institute (TBGRI);

In November 1997, some Kanis with assistance of TBGRI In November 1997, some Kanis with assistance of TBGRI formed Kerala Samudaya Kshema Trust with 09 tribal formed Kerala Samudaya Kshema Trust with 09 tribal members and with objectives:members and with objectives:

- Welfare and development activities of the Kanis in Kerala;- Welfare and development activities of the Kanis in Kerala;

- Preparation of biodiversity register to document the - Preparation of biodiversity register to document the knowledge base of the Kanis;knowledge base of the Kanis;

- To evolve and support methods to promote sustainable - To evolve and support methods to promote sustainable use and conservation of biological resources use and conservation of biological resources

WHAT CAN YOU DO TO WHAT CAN YOU DO TO PROTECT YOUR GIs?PROTECT YOUR GIs?

So what is the need of the hour?So what is the need of the hour?Know that what you have is a GI, recognize Know that what you have is a GI, recognize

it and elevate it to such a statusit and elevate it to such a statusForm an association of producers of such a Form an association of producers of such a

GI and make rules as to how to protect the GI and make rules as to how to protect the GIGI

Define and document traditional practices Define and document traditional practices used to produce the goods branded as GIsused to produce the goods branded as GIs

……contd.contd.

WHAT CAN YOU DO TO WHAT CAN YOU DO TO PROTECT YOUR GIs?PROTECT YOUR GIs?

So what is the need of the hour?So what is the need of the hour?Define the geographical boundary where Define the geographical boundary where

the GI is producedthe GI is producedEven if your GI is not registered, start Even if your GI is not registered, start

taking action against any attempts to taking action against any attempts to abuse your GIabuse your GI

Form rules and regulations for Form rules and regulations for production of the same and urge all production of the same and urge all right holders to adhere to the sameright holders to adhere to the same

INDIA AS A BRAND INDIA AS A BRAND EXPORTEREXPORTER

Second most populous country: Second most populous country: 1.07 billion1.07 billion

Primarily agricultural economy: Primarily agricultural economy: 21.8 % of GDP (rice, wheat, tea, 21.8 % of GDP (rice, wheat, tea, coffee, cotton, potatoes)coffee, cotton, potatoes)

The service sector – a fast growing The service sector – a fast growing sectorsector

The Indian diaspora as a brand The Indian diaspora as a brand ambassadorambassador

INDIA AS A BRAND EXPORTERINDIA AS A BRAND EXPORTER Post independence – protectionist

industrial policy

Recognition of foreign investment in high-tech industries

Post liberalization – FDI allowed in many sectors

State intervention in public sector reduced

A broad industrial base in public/private sectors

INDIA AS A BRAND EXPORTERINDIA AS A BRAND EXPORTER

Use of IP as a instrument of economic growth

Large domestic market – An opportunity for domestic brands

Agricultural economy - unbranded exports of commodities – Basmati rice, Darjeeling tea.

INDIA AS A BRAND EXPORTERINDIA AS A BRAND EXPORTER Success storiesSuccess stories

Maruti Suzuki – Maruti now a Maruti Suzuki – Maruti now a strong international mark strong international mark

Tata – Major export brand Tata – Major export brand

Mahindra Mahindra

Kingfisher BeerKingfisher Beer

Hidesign – leather accessories Hidesign – leather accessories

Atlas cycles Atlas cycles

Infosys Infosys

Wipro Wipro

geographical indications: more than a marketing tool part – i a presentation by rajendra kumar...

Documents

geographical indication

haier slide

modernity slide

benchmark slide

country of origin slide

useful invention slide

ip rights slide

origin product