IP Australia rejects India’s trade mark application for the word ‘Basmati’
The Agricultural and Processed Food Products Export Development Authority (APEDA), a part of the Indian Government’s Ministry of Commerce and Industry, has failed in its bid to register ‘Basmati’ as a certification trade mark in Australia in relation to rice.
APEDA contended that Basmati was a geographical indication in respect of rice grown in particular areas of India and Pakistan.
Certification Marks in Australia
Australia is a party to the Agreement on Trade-Related Aspects of Intellectual Property Rights, which mandates protection for geographical indications. Under Australian trade mark law, geographical indications may be protected as certification marks – which indicate that goods or services have a particular, and verifiable characteristic. Australia also administers a specific regime in relation to geographical indications for wine.
Registered certification marks in Australia include ‘Parma’ by Consorzio del Prosciutto di Parma for pork products produced in particular ways in the Italian Province of Parma, and ‘Scotch Whisky’ by the Scotch Whisky Association.
APEDA’s application for BASMATI
In the case of Basmati, its particular and verifiable characteristics were said to include its nutty aroma, long and slender grains, soft texture, delicate curvature, comparatively low glycaemic index, little or no breadthwise swelling on cooking, high grain integrity on cooking, and linear kernel elongation on cooking – the result of a combination of factors including agro-climatic conditions in areas where this rice variety is grown.
Amongst other things, to be a valid certification mark under Australian law, the mark has to be capable of distinguishing goods and services certified by the applicant (or an approved certifier) from goods and services that are not certified.
In the case of BASMATI, in prosecution, and at a hearing before a Delegate of the Registrar of Trade marks, BASMATI was found not to be capable of distinguishing rice goods certified by APEDA from uncertified rice goods on the basis that the ordinary signification of the word is that it is a particular variety of rice.
Use of Survey Evidence for ‘Basmati’
APEDA relied on evidence including a market survey showing that a significant number of people associated ‘Basmati’ with rice of Indian and Pakistani origin. However, the evidence also showed that it was also associated with rice from other countries, and Asia more broadly.
While the Delegate found that use of the term ‘Basmati’ in India was stringently regulated in India by APEDA, the Delegate also found that other traders would have a legitimate desire to use ‘Basmati’ in relation to rice, and rice derived products that are not certified by APEDA:
“At most, the evidence demonstrates that Basmati may distinguish, amongst a proportion of the Australian market, particular rice of Indian origin from rice of Indian origin that is not so certified. However, it does not demonstrate that Basmati more broadly distinguishes rice certified by [APEDA] from rice not so certified by other traders who have an equally valid claim to use the same term” he said.
While the APEDA tried to rely on evidence of use to satisfy the examiner that the mark had become capable of distinguishing the goods, the delegate found that while large amounts of Basmati rice had in fact been exported to Australia over many years, it was not clear to what extent this rice was certified by APEDA.
The decision comes as Australia negotiates with the European Union for Australian farmers’ rights to use labels such as feta and prosecco on their produce. Australia’s Minister for Agriculture Murray Watt stating that while the EU has expressed their concern on the issue, it’s also a big issue for a lot of Australian producers “who’ve literally brought those products or vines and things like that from Europe from their own family history”.
The APEDA has appealed to the Federal Court of Australia.