India — According to a report published in The Hindu, The Tea Board has recently achieved a landmark victory protecting GI (geographical indication) registration of Darjeeling tea in France and in the U.S. The U.S., the victory occurred after a prolonged battle that began in 2000 and ended in 2006 after the expiration necessary for an 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 authorized to publish the order extracts at the cost of the party it was fighting against.
The situation in France involved Jean-Luc Dusong; who was discovered to be using the name Darjeeling in association with a device of teapot on various goods and services, including artwork, engravings, 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, but India experienced success when the Court of Appeals in Paris 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.
The GI is utilized for names or signs on goods to indicate and certify that products originate from a specific geographical origin and possess certain characteristics or reputation, which is essentially attributed to the indicated geographical origin. 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 goods from those of others.
While objecting to the registration in France through a civil suit, the Tea Board argued that the use of the word would deceive customers into believing that these products and services, though not related to tea, would somehow be associated with the reputation of Darjeeling tea. 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 Appeals nullified the registration granted to Dusong with the teapot device, and injected him from using the name Darjeeling in any context. It further authorized 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 Dusong up to a maximum of 5,000 euros. It also directed Dusong to pay costs up to 2,000 euros to the Tea Board, according to a Tea Board release.
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 recognized Tea Board’s efforts in maintaining control of the mark and protecting its value as GI and held that regulations and the licensing program put in place by the Tea Board constitute adequate provisions for control.