1. I~TA BULLETINJUNU 2000 VOL. 55, No. 11
BRITISH WEST that teas sold as "Darjeeling" do not
AT-A-GLANCE always origina te fram this district of
INDIES India. The Indian Tea Board has
recently launched the Certification
Service Marks Authorized
Trademark Scheme ("CTMS") for the
BRAZIL protection of Darjeeling tea as a geo-
The government of the Turks &
graphical indication of India, effective
Caicas Islands adopted in April the
BRITISH WEST INDIES immediately.
Trade Marks (Amendment) Act ,2000
The CTMS provides that all pro-
which provides that:
INDIA ducers, packers, exports and overseas
• Service marks may be registered
importers of Darjeeling tea will have
in the jurisdiction;
LITHUANIA to apply to the Tea Board for a user's
• International Classes 35-42 are
added for registration of service license. The main objective is to pre-
MALAYSIA
marks; and vent misuse of the Darjeeling name.
Following the inlWUu.Iion af the
SPAIN • A mark may be assigned ar trans-
ferred either with or without the CTMS, any country may not patent
goodwill of the business with Darjeeling tea nor may any fake teas
SWEDEN
which the mark is associated. pass off as Darjeeling Tea. However,
TAIWAN The Turks & Caicos Islands are a the task has just begun. There are
many more geographicallocations with-
British Dependent Territory in which
applications for trademarks can be in India which need protection under
the Geographical Indications Aet.
filed either locally or based upon a
BRAZIL current U.K. registration. [Source: Jasmeet Kaur Madhan, (Amitabha
Sen & Co., New Delhi, India);
[Source: George c.]. Moore, (Caribbean Verifier: S. K. Verman, (Ghaziabad Civil
Registrations in Bad Faith Trademark Services,. West Palm Beach, Courts, Uttar, Pradesh, India)}
Merit Transfer Florida, U.S.A.);
Verifier: Paul de Weerd, (Superintendent,
Financial Services Commission, Turks & ParaIlel Imports In Indian Law
On March 29, 2000, the Appellate Caicos Islands, British West Indies)J
Court of Brazil ordered that title to a Until December 1999, India had no
domain name comprising the name of provisions related to parallel imports.
a famous racecar driver registered in INDIA However the Indian Parliament has
bad faith be transferred to the trade- now introduced provisions dealing
mark owner. Darjeeling Tea with parallel imports in the Trade
In Ayrton Senna Promoções, the Marks Act, 1999 (TM Act'). Those
heirs and successors of the late The place names "Basmati," provisions have been formally enact-
Brazilian Formula 1 racer Ayrton "Haldi," and "Neem" are examples ed in the new legislation.
Senna, sought to prevent Laboratório of often-misused Indian geographical Two clauses have been incorporat-
de Aprendizagem Meu Cantinho indications due to the absence of any ed in the Trade Marks Act under the
Ltda., a school, from using the statutory protection in India. That pre-existing Section 30 viz. sub-claus-
domain name "ayrtonsenna.com.br." may change with the passage of the es 3 & 4. Section 30 deals with lim-
The lower court had held that the Geographical Indication of Goods its on the effect of a registered trade-
defendant registered (Registration & Protection) Act, mark. The new sub-clause 3 prevents
"ayrtonsenna.com.br" in bad faith 1999 ('GI Act'), notified on
the trademark owner from prohibit-
and granted a preliminary injuncti~n December 30, 1999, under which
ing the sale of goods in any geo-
suspending the registration. The India has formalized rules and regula- graphical area on grounds of trade-
Court of Appeals affirmed, holding tions for protection of its geographic mark rights, once three goods under
locations.
that the plaintiff's prior registration
the registered trademark are lawfuIly
af the AYRTON SENNA mark with Darjeeling tea has been cultivated acquired by another person. Sub-sec-
the Brazilian Patent and Trademark in the Darjeeling district of West tion 4 states that sub-section 3 shall
Office (" INPI") protected it against Bengal since 1835 and acquired a not apply when the condition af
infringing domain name use. uni que taste and flavor due to the goods is changed or impaired after
[Source: Erica Aoki; (Tozzini, Freire, Teixeria geographic location and the special they have been put on the rnarket.
e Silva Advogados, Sao Paulo, Brazil); climate of the region. Darjeeling tea
Verifier: Rodrigo A. Santos, (Momsen
The new provisions give a right to
growers and producers have received the proprietor of a registered trade-
Leonardos & Cia, Rio de Janeiro, Brazil)}
complaints from alI over the world mark to oppose further dealings in