Managing the Challenges of the Protection and Enforcement of Intellectual Property Rights
|Name:||Darjeeling Tea||Object of Protection:||Distinctive Signs / Commercial Names, Goods with Specific Geographical Origin|
|Organization Type:||Co-operative, Government||Instrument of Protection:||Geographical Indications and Appellations of Origin, Trademarks|
|Industry:||Food Products||Focus:||Branding, IP Enforcement / Infringement, IP Management, Licensing, Partnerships|
The tea gardens of Darjeeling in West Bengal produce the world's most prized black tea (Photo: Abhishek Kumar)
In 1834, Dr. Campbell, the first superintendent of the northeast Indian district of Darjeeling, experimented with tea seeds in his garden. Soon the local people found that the hilly region offers a unique and complex combination of agro-climatic conditions for tea plantation. Today, Darjeeling boasts to produce the most coveted black tea in the world, with connoisseurs’ assertion that without Darjeeling, tea would be like wine without the prestige of Champagne.
According to records, the first commercial tea gardens in the region were planted by the British tea interests in 1852. By 1866, Darjeeling had 39 gardens producing a total of 21,000 kilograms of tea per year. Tea cultivation in Darjeeling has continued to prove to be a profitable venture, and today, nearly 17,400 hectares in 87 tea gardens produce over 10 million kilograms of tea every year. The tea industry in India in general and in Darjeeling in particular, is operated by the private sector. The Darjeeling Planters Association, formed in 1892, is the sole producers’ forum for Darjeeling tea. The Association works in close cooperation with the Tea Board of India, a government-controlled organization that administers all stages of tea cultivation, processing and sale, including that of the Darjeeling segment.
Darjeeling tea comprises just over one percent of the total tea production in India (10.85 million kilograms of Darjeeling tea as compared to 981 million kilograms of total production). Yet, the quality, reputation and characteristics of Darjeeling tea have made the region a hallmark, underscoring that the incomparable quality of this tea is essentially attributable to its geographical origin. Traders as well as individual buyers, while purchasing Darjeeling tea, will expect the tea to be cultivated, grown and produced in the defined region of the district of Darjeeling. Consequently, Darjeeling tea that is worthy of its name cannot be grown or manufactured anywhere else in the world.
Goods with Specific Geographic Origin
The Darjeeling region has the perfect soil and environmental conditions for tea cultivation. All of the tea estates are located in valleys ranging from 200 meters to 2,000 meters above sea level, and with slopes as steep as sixty to seventy degrees, the gradient of the hills provide natural drainage during the monsoon season. High rainfall is also a boon for tea cultivation, and high humidity, the evaporation rate, wind speed, an average of two to four hours of sunshine a day, abundant mist, clouds and fog are also all important factors contributing to the unique quality of the tea cultivated in the Darjeeling region.
The soil in particular is also very conducive to high quality tea cultivation. The average carbon level of soil in other tea growing regions in India is less than one percent, but it is much higher in the Darjeeling region. Rich in organic matter from forest cover and the weathering of underlying rocks, the soil has an abundance of essential nutrients, and combined with the unique weather and geographical conditions make an environment perfect for growing tea.
Another specific feature of Darjeeling tea is that the bushes that grow in the region belong to a Chinese hybrid, camellia sinensis, which is found almost nowhere in the world outside China and Japan. It is a small-leaved tea bush and its roots grow more than one meter long, which helps for soil conservation and allows the bush to withstand a cold climate. This bush is a perfect match for the soil and climate of the Darjeeling region. Tea cultivated from it in Darjeeling therefore enjoys many unique properties that tea cultivated from the same bush in other regions does not.
Because tea in the Darjeeling region has been cultivated for generations, the local population is filled with skilled workers possessing traditional knowledge of tea cultivation specific to the region. Jobs on the various tea estates are handed down within families, and as such tea cultivation and know-how has become a family tradition among the population. Making up more than seventy percent of the work force, women in particular are very skilled in tea picking, a highly specialized job that requires a great deal of care. Women consider tea bushes extremely sensitive and perform their work very efficiently by using techniques handed down from generation to generation.
Because the tea bushes in the Darjeeling region are the rare camellia sinensis, picking tea leaves there is different than in other parts of India, and shoots of two leaves and one bud must be picked. The traditional knowledge the women possess ensures that they can efficiently pick Darjeeling tea while being careful to protect the tea bushes from any undue stress. Combined with the specific soil and environmental conditions of the region, the traditional knowledge and production practices of local producers differentiates Darjeeling tea from other teas grown anywhere else in the world.
The Tea Board of India underscores its role in authenticating the regional origin of Darjeeling tea. To safeguard the special characteristics associated with this tea and its high reputation, both the Tea Board and the Darjeeling Planters Association have been involved at various levels in protecting this common heritage. The protection is essentially geared to:
- prevent misuse of the word "Darjeeling" for other types of tea sold worldwide
- deliver the authentic product to the consumer
- enable the commercial benefit of the equity of the brand to reach the Indian industry and hence the plantation worker; and
- achieve international status similar to Champagne or Scotch Whisky both in terms of brand equity and governance/administration.
At the legal level, the Tea Board is the owner of all intellectual property rights associated with Darjeeling tea.
The Darjeeling tea logo (courtesy Darjeeling Tea), created in 1983, is registered in various jurisdictions including India, the United States, Japan and some European countries. It is internationally registered under the Madrid system (Registration No. 528696).
One of the earliest measures – taken in 1983 by the Tea Board – was to develop a “Darjeeling” logo. The logo as well as the word DARJEELING are now registered certification trademarks (CTM) of the Board under the Trademarks Act of 1999 (previously Trade and Merchandise Marks Act of 1958) of India. Internationally, the logo has been registered in various jurisdictions including Canada, Egypt, some European countries, Japan, Lebanon, the United Kingdom and the United States of America as a trademark/certification mark/collective mark. Additionally, the DARJEELING word is registered as a trademark in Russia, and similar registration of the word is pending in Australia (as a certification mark), in the European Union (as a Community collective mark), and in Germany and Japan (as a collective mark). The logo is also registered internationally under the Madrid system.
Both the logo and the word “Darjeeling” are registered domestically under the Geographical Indications of Goods (Registration and Protection) Act of 1999 of India. The geographical indication (GI) protection is significant, particularly when CTM registration is not accepted in a jurisdiction where protection is sought, for example, in France for Darjeeling. Additionally, under European Union (EU) Regulation 2081/92, GI registration is necessary to obtain reciprocal protection of a mark.
Under the Indian Copyright Act of 1957, the Darjeeling logo is copyright protected and registered as an artistic work with the Copyright Office.
While the tea industry in India is almost completely in the private sector, it has been statutorily controlled by the government since 1933 under various enactments culminating in the Tea Act of 1953. The Tea Board in India is a Board set up under the same Act of Parliament. The Board is administratively under the control of the Ministry of Commerce & Industry of the Government of India, but closely collaborates with the Darjeeling Planters Association.
To ensure domestic and international protection of Darjeeling as a certification trademark and a geographical indication, as well as the supply of genuine Darjeeling tea, the Tea Board initiated in 2000 a compulsory system of certifying the authenticity of Darjeeling tea under the provisions of the Tea Act of 1953. The system requires all dealers in Darjeeling tea to compulsorily enter into a license agreement with the Tea Board and pay an annual license fee. The terms and conditions of the agreement provide that the licensees would furnish information relating to production, manufacture and sale of Darjeeling tea through auction or otherwise. The Tea Board is thus able to compute and compile the total volume of Darjeeling tea produced and sold in any given period. No blending whatsoever with teas of other origin is permitted.
Under this authentication process, 171 companies dealing with Darjeeling tea have registered with the Tea Board, 74 of which are producer companies and 97 trader/exporter companies. Certificates of Origin are then issued for export consignments. Data is entered from the garden invoices (the first point of movement outside the factory) into a database, and export of each consignment of Darjeeling tea is authenticated by issue of the Certificates of Origin by crosschecking the details. This ensures the supply-chain integrity of Darjeeling tea until consignments leave the shores of India. The Customs authorities in India have officially instructed all Customs checkpoints to check for and ensure that Certificates of Origin accompany Darjeeling Tea consignments.
The Tea Board has also sought the support of all overseas buyers, sellers and Tea Councils and Associations in so much as they should insist that Certificates of Origin accompany all export consignments of Darjeeling tea. Overseas importers are thus ensured of 100% authentic Darjeeling tea in all their consignments.
IP Enforcement / Infringement
In order to prevent the misuse of the word “Darjeeling” and the logo, the Tea Board has since 1998 hired the services of CompuMark, a global trademark research and brand protection solutions provider. 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 the Darjeeling logo have been reported. Some of these have been challenged through oppositions and cancellations and some through negotiations. Five instances have been successfully concluded in countries such as Japan, Sri Lanka and Russia, while others are still pending decision.
In one of the cases in France, the Tea Board of India put the applicant Comptoir des Parfums 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. Moreover BULGARI Switzerland agreed to withdraw the legend “Darjeeling Tea fragrance for men” pursuant to legal notice and negotiations.
The Tea Board, however, has unsuccessfully attempted to defend the Darjeeling GI in a number of instances, mainly due to legal divides in different jurisdictions. For example, 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 trademark in respect of several goods such as clothing, shoes and headgear. 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.
In the last few years, the Board has spent approximately USD 200,000 on legal and registration expenses, costs of hiring an international watch agency and fighting infringements in overseas jurisdictions. This does not account for administrative expenses including manpower working on the job in the Tea Board, cost of setting up monitoring mechanisms, software development costs, etc. The resources spent by the Board for worldwide protection and enforcement constitute a significant drain on its budget. Nevertheless, it has recognized the importance of protection and, despite the costs, has striven to ensure that Darjeeling tea is protected for the benefit of producers and consumers.
One of the key issues faced by the Tea Board is that of mixing, whereby a tea packer maintains a level of tasting consistency and price stability in his brand by mixing Darjeeling tea with teas procured from different sources. There is no process change involved but the packer justifies the considerable mark-up in the retail prices on the ground that he has made considerable investments in propagating his mixture under his brand.
The Tea Board and the Darjeeling producers insist and require that, while the use of the expression "Darjeeling blend" would be applicable to a blend of Darjeeling teas drawn from more than one Darjeeling estate, tea may only be called Darjeeling tea if it contains 100% Darjeeling tea. For example, if the name DARJEELING is used as part of the packer's brand, then the tea to be sold there under must be 100% Darjeeling tea conforming to the standards prescribed by the Tea Board.
However, if Darjeeling tea is one of the components of a tea mixture and such mixture is sold under the packer's mark (which does not include the name DARJEELING), then the Tea Board requires that the ratio, name and percentage of each of the components including Darjeeling tea, be clearly indicated on the packaging, and the font, design and size of the name DARJEELING and other constituents must be in accordance with and proportionate to the contents of the pack. The objective is to ensure that there is no misrepresentation amounting to passing off as to content and origin of the mixture and thus protect the intrinsic value and integrity of Darjeeling as a geographical indication. Further, the consumer must know what he/she is buying and how much Darjeeling tea is contained in the mixture.
Despite the GI registration and the efforts of the Tea Board, most consumers are unfamiliar with what a GI is and are unaware of the official Darjeeling tea logo. The widespread international popularity of Darjeeling tea has caused most consumers to be convinced of a certain product only by the name Darjeeling, a well known retail shop or a familiar seller. Many regular consumers of Darjeeling tea have trust in their local supplier and purchase their tea on the sole basis of the image of a specific seller or shop. An abundance of teas abusing or misusing the Darjeeling name along with labels such as “fair-trade certified tea” or “certified organic tea” makes for further confusion, and a lack of education means consumers do not really verify the official GI logo when buying loose or packaged Darjeeling tea. As a result, a good portion of consumers think they are buying Darjeeling tea when in fact they are not. Unless there is a greater degree of transparency, consumers as well as producers will be deprived of their legitimate due.
Over 70 percent of the annual production of Darjeeling tea is exported to, inter alia, Germany, Japan, the United Kingdom, the United States of America and other EU countries. The Certificates of Origin issued by the Tea Board ensure the supply of genuine Darjeeling tea. Due to its high quality and flavor, it has gained recognition of discerning consumers worldwide. The initiatives taken by the Tea Board and the Darjeeling Planters Association to protect the geographical indication of Darjeeling tea have ensured that the quality and special characteristics of this tea are not lost and that consumers receive the authentic product. The cooperative scheme from the Board and the Association has made Darjeeling tea a vintage product, aspired worldwide. Likewise, although it is produced in a limited quantity, this vintage tea generates returns several times higher than ordinary tea.
The Darjeeling tea industry at present employs over 52,000 people on a permanent basis, and a further 15,000 persons are engaged during the plucking season. A unique feature of this work force is that more than seventy percent are women. The industry also has a perquisite mechanism for the garden workers, which effectively provides a cushion against the impact of inflation and scarcities. Additionally, the workers are provided with free accommodation, subsidized ration and free medical benefits.
A Model for Public-Private Partnerships
While the planters in Darjeeling have been producing high quality tea for over 150 years now, it is the Tea Board that has sole control over the growing, quality control and exporting of Darjeeling tea. Both the Tea Board and the Darjeeling Planters Association have been involved at various levels in protecting and defending the “Darjeeling” name and logo. It is this collaboration between the Board and the Association that has made the reputation that Darjeeling tea enjoys worldwide.