CCP: TE 99/6





COMMITTEE ON COMMODITY PROBLEMS

INTERGOVERNMENTAL GROUP ON TEA

Thirteenth Session

Ottawa, Canada, 27-29 September 1999

THE ADMINISTRATIVE MECHANISM
FOR THE USE OF THE TEA MARK

 

Table of Contents


I. INTRODUCTION

1. At its last Session in Bali, Indonesia in 1997, the Intergovernmental Group on Tea agreed that the communications device (now known as the Tea Mark), which had been developed under the project, was to be considered part of a package for the generic promotion of tea internationally. It further agreed that in pursuance of the overall objectives of the project, ownership of the communications device would continue to be retained by the FAO on behalf of the Intergovernmental Group and its members as well as the Common Fund for Commodities.

2. The Group further instructed FAO, on behalf of the Group and its members, in co-operation with the Project Executing Agency (PEA) and its Steering Committee, to prepare a proposal for the usage of the communications package following completion of test marketing and the conclusion of the overall project. This proposal would address issues concerning the usage and monitoring of the communications package, taking into account the widely expressed view that the package should be made available as extensively as possible, and in accordance with internationally accepted legal and commercial practice. It was also suggested that consideration should be given to levying a license fee for the use of the communications package.

II. RATIONALE

3. The instructions provided by the Group can be divided into two distinct sets of functions:

  1. The registration of the Tea Mark and administrative mechanism for the use of the mark, and
  2. The continued test marketing and generic promotion of tea through the use of the Mark.

4. The use of the Mark to continue with the test marketing and generic promotion of tea should only be undertaken at project completion and after the impact in the test markets have been evaluated. The Project Execution Agency (PEA) will provide to the Group a review of the project at this Session, which will include recommendations on the future use of the Mark, particularly in continuing the test marketing and promotional activities. The Group may wish to consider these proposals and guide the Secretariat as to how it wishes to proceed; bearing in mind that the Technical Advisory Group (TAC) would still need to carry out its evaluation upon project completion. It is hoped that a proposal will be ready for the Group's consideration at its next Session in 2000.

5. This document deals with the first set of functions only. It examines the international registration and administrative mechanism for the use of the Tea Mark, mainly to avoid any undue delays in the use of the Mark by countries wishing to do so. The mechanism would of course be subject to the Group's approval.

III. THE ADMINISTRATIVE MECHANISM

A. OVERVIEW

6. The implementation of the project sponsored by the Intergovernmental Group on Tea entitled, Programme to Create Increased Demand for Tea through a Generic Promotion Campaign based on the Human Health Benefits of Black Tea Consumption, is expected to be completed by the end of 1999. The major output of the project includes, inter alia, the research results under Objective 1 supporting various health claims, and the Tea Mark used in the generic promotion of tea in the four test markets of the project, namely, the Czech Republic, Indonesia, Spain and Zimbabwe.

7. The Tea Mark was developed as an international symbol of tea's new health proposition and was tested in four very diverse markets. Indications are that the Mark and the accumulated experience of marketing it and tea's health proposition have become valuable properties. It is critical that options for the future control and exploitation of these properties, beyond the life-span of the currently agreed test markets, be explored. However, this constitutes a major task and can only be meaningfully carried out once the project has been completed and evaluated as mentioned above. In the meantime, the registration of the Mark and the establishment of an administrative mechanism need to be implemented urgently. The Secretariat, given the guidelines laid down by the Group in its Twelfth Session in Bali, consulted widely in order to reach some consensus on the most suitable administrative mechanism. The following section develops a proposal for this mechanism for the approval of the Group.

B. REGISTRATION OF THE TEA MARK INTERNATIONALLY

8. The Tea Mark incorporating the strapline `discover the goodness' has now been registered by the FAO on behalf of the Group in each of the current four test markets (Spain, Czech Republic, Zimbabwe and Indonesia). In addition the Mark has been registered with all the members of the Madrid treaty and in a list of priority countries as detailed below:

Argentina Japan Syria
Australia Kenya Tanzania
Bangladesh Malawi Uganda
Canada New Zealand United Kingdom
India South Africa USA
Iran Sri Lanka  

9. It should be noted that the registration of the Mark has been applied for, which provides ongoing protection. However, complete and final registration may take some time to achieve as the local agents have to cover any queries or objections that are raised. A detailed progress report on the registration is appended.

10. The reproduction and use of the trademark and guidelines for the tea health campaigns are exhaustively specified within the published Brand Manual CCP: TE 99/CRS.1. This Brand Manual constitutes a legal agreement between the FAO and any party who may be granted the use of the Tea Mark. However, the definition of the product to qualify in using the Mark is still to be agreed on.

C. PRODUCTS

11. One of the most difficult areas to obtain consensus was on the products, particularly the minimum percentage of leaf, which would qualify to use the Tea Mark. Bearing in mind that the project initially targeted black tea only, members of the Group have requested that the use of the Mark be extended to green and oolong teas as well. In addition, there has been no agreement on the minimum leaf content of Camellia Sinensis, which would qualify. The range remains between 70 percent and 100 percent. A compromise of 80 percent put forward by the Chairman of the Steering Committee was not acceptable to the three major tea producing countries. They proposed 90 percent as a fair compromise. A solution to this impasse is urgently required.

D. INSTITUTIONAL ARRANGEMENTS

12. The Group unanimously agreed that FAO be responsible for the licensing, monitoring and surveillance of the Tea Mark internationally. An appropriate mechanism needs to be set up within FAO for this purpose (FAO Control Centre). Use of the Mark either on packaging or advertising material must be cleared by the FAO Control Centre at artwork stage. In addition to any problems in applying the Mark because of technical printing limitations etc, a coherent promotional plan must be accompanied with each application for the consideration by the FAO Control Centre in collaboration either with its TAC or a Steering Committee.

13. Nationally, each government would formally inform FAO (and the Group) regarding the institution which would be responsible for licensing and surveillance of the Mark domestically. Where possible these appointed bodies will be Tea Boards or Tea Associations and their roles may include:

  1. collect applications and verify the commercial viability of the tea packer involved;
  2. once approved, the applicant will be supplied with a copy of the Brand Manual and the right to use the Tea Mark in accordance with the regulations outlined in the Manual;
  3. in giving its approval for the use of the Mark the national institution must be fully aware of the need that the package must be promoted coherently and effectively to opinion formers, to consumers and the media. It will be of little use to simply float the Mark on packs without a coherent plan to establish its recognition by potential consumers and key opinion formers as in the test market findings.

E. FUNDING

14. The funding of the FAO control Centre would be through the levying of an annual licence fee. It is estimated that in order to hire appropriate personnel (mid-level professional officer) with an effective operational budget a minimum of US $150 000 annually would be required as there is still a lot of work left in completing the registration requirement under the Agreement on Trade Related Intellectual Property Rights (TRIPS). This would mean that each participating country would contribute between about US $10 000 to US $15 000 per year, depending on the number of countries involved. This fee would be collected by the locally appointed body and forwarded to the FAO. Initially however, the FAO control Centre could be contracted out to a part-time consultant and an effective administrator at a lower cost (to be determined by the initial wave of countries applying for licences to use the Mark). As the scope and reach of the package increases the staffing structure would change to become more permanent. In addition, it may be appropriate at that point in time to analyze the cost-effectiveness of bringing the two sets of functions under one entity, either in FAO or a separate institution altogether.

IV. CONCLUDING REMARKS

15. The proposal for the administrative mechanism for the use of the Tea Mark, including the progress report on the registration of the Mark, the institutional arrangement and estimates on funding have been outlined. Furthermore, a linkage between the future use of the Mark in the test marketing and generic promotion needs to be completed as a matter of urgency. In the medium to longer term, it is believed the most cost-effective option would be to combine the use of the mark in test marketing and generic promotion with its actual administration to be managed by a single entity.

16. As can be seen from the foregone discussion, there are several issues that need to be resolved urgently by the Group, before the Tea Mark can be used. The most important include:

  1. the products that qualify,
  2. the level of licensing fees,
  3. the penalties for non-compliance either as unlicensed user or not adhering to the Brand Manual, and
  4. consistency with the Manual.
  5. agreement in principle on whether the continued test marketing and generic promotion be done collectively as a Group or left to individual countries.

APPENDIX

PHASE 1A TRADEMARKS
COUNTRY NUMBER MARK SPECIFICATION OWNER FILING

DATE

PRIORITY

DATE

STATUS NOTES
United Kingdom 2134484 Series:

"Tea-Discover the Goodness" plus device

"Discover the Goodness" plus device

Teas for medicinal purposes in class 5.

Tea and all beverages based upon and derived from tea in class 30.

SSN Ltd 30/05/97 30/05/97 Registered Next renewal due 30/05/07.
Switzerland 453571 "Discover the Goodness" plus device Teas for medicinal purposes in class 5.

Tea and all beverages based upon and derived from tea in class 30.

FAOUN 16/02/98 16/02/98 Registered Next renewal due 16/02/08.
Switzerland 452690 "Tea-Discover the Goodness" plus device Teas for medicinal purposes in class 5.

Tea and all beverages based upon and derived from tea in class 30.

FAOUN 16/02/98 16/02/98 Registered Next renewal due 16/02/08.

*SSN Ltd. is Sekforde Street Nominees Ltd. and FAOUN is Food & Agriculture Organization of the United Nations.

PHASE 1B TRADEMARKS
Czech Republic 127817 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. SSN Ltd 28/11/97 30/05/97 Registered Next renewal due 28/11/07.
Indonesia D9726055 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. SSN Ltd 27/11/97 30/05/97 Under Examination Should have been examined in November 98. Agents advice still awaiting examination.
Spain 2128893 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. SSN Ltd 28/11/97 30/05/97 Opposition proceedings brought by Nestle Espaņa S.A. Opposition claiming mark is not distinctive - that it is formed of generic signs used in connection with the goods. Spanish Patent Office has refused the application. Agents have filed appeal. Awaiting outcome of appeal.
Zimbabwe 1877/97 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. SSN Ltd 28/11/97 30/05/97 Under Examination Zimbabwean trademark registry is insisting that "tea" and "discover the goodness" are separately disclaimed. Agents awaiting instructions re: evidence of use.
PHASE 2A TRADEMARKS
European Union (CTM) 694042 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. SSN Ltd 24/11/97 30/05/97 Under Examination Authorisation provided to OHIM. Further query from OHIM as to priority claim.
Madrid Agreement 695602 "Tea-Discover the Goodness" plus device Teas for medicinal purposes in class 5.

Tea and all beverages based upon and derived from tea in class 30.

FAOUN 16/06/98 16/02/98 Under Examination The countries covered include: Belarus, Benelux, Bosnia-Herzegovina, Bulgaria, China, Croatia, Egypt, Hungary, Kazakhstan, Kyrgystan, Moldova, Mongolia, Morocco, North Korea, Poland, Romania, Russian Federation, Slovenia, Sudan, Ukraine, Finland and Iceland. Individual countries now have a year within which to object to this registration on national grounds, or 18 months for Madrid Protocol countries i.e. Finland and Iceland. These objections are now being received.
PHASE 2B TRADEMARKS
Argentina 2170055 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 18/08/98 16/02/98 Under Examination Follow up 12 months after application filed.
Australia 770333 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 17/08/98 16/02/98 Registered Renewal date 17/08/08.
Bangladesh 56735 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 20/08/98 16/02/98 Under Examination Follow up 12 months from filing.
Canada 887,488 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 17/08/98 16/02/98 Under Examination Canadian Patent Office are requesting that "Goodness" be disclaimed. Discussions on several amendments are ongoing.
India 815067 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 18/08/98 18/08/98 Under Examination Unable to claim priority from Swiss trademark registration in India. Follow up 12 months after filing.
Iran 7708210 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 01/11/98 01/11/98 Rejected by the Iranian IP Office A temporary petition against rejection has been filed. The Iranian lawyers have quoted a high fee for filing such a petition with only a 70% chance to succeed. The time for filing against the decision by the IIPO expired at the end of February 1999. Instructed not to take any further steps in relation to the Iranian application.
Japan 10-69840 "Tea-Discover the Goodness" plus device Tea in class 30. FAOUN 17/08/98 17/08/98 Under Examination Advised to restrict specification. To wait for initial response from Japanese Trademark Office.
New Zealand 296650 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 17/08/98 16/02/98 Under Examination Advised this will be accepted for registration in Part B of the Register. Awaiting instructions from client.
Pakistan 149560 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 18/08/98 18/08/98 Under Examination Unable to claim priority using Swiss marks in Pakistan. The Pakistani Trademarks Office has been informed that the mark is proposed to be used. To follow up in August 1999 as will probably take 12 months for examination.
South Africa 98\14593 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 17/08/98 16/02/98 Under Examination Follow up concerning progress to registration.
Tanzania

(Zanzibar)

198\98 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 42. FAOUN 04/09/98 04/09/98 Registered Due for renewal on 04/09/12.
Tanzania

(Tanganyika)

26168 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 04/09/98 04/09/98 Accepted. Published for opposition The word "tea" has been disclaimed.
Uganda 21830 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 03/09/98 03/09/98 Under Examination Follow up 12 months from application.
Malawi 403\98 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 10/09/98 10/09/98 Under Examination Follow up 12 months from filing.
Kenya 48110 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 22/10/98 22/10/98 Under Examination Unlikely to be advertised until 10/99. Registration certificate unlikely to be issued until 10/00.
Sri Lanka 89145 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 31/08/98 16/02/98 Under Examination Follow up regarding registration as this territory is important to client.
Syria 1131-25-120669 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 16/08/98 16/02/98 Initially rejected by Syrian Trademark Registrar Write to agent and clarify grounds for rejection and whether it is possible to overcome them.
USA 75\536,796 "Tea-Discover the Goodness" plus device Tea and all beverages based upon and derived from tea in class 30. FAOUN 17/08/98 16/02/98 Under Examination First Official action report received and responded to. Awaiting response from Trade Mark Office.