An Indian government authority is attempting to secure trade mark rights in Australia for the term BASMATI, in a bid to prevent its use for rice grown outside the country. The Agricultural and Processed Food Products Export Development Authority (the Authority), has sought protection for the term as a geographical indication by way of a certification trade mark.
The Australian Trade Marks Office rejected the trade mark application for BASMATI for rice late last year but has approved an application for a logo trade mark that incorporates the term.
The Indian Authority is responsible under India’s Agricultural and Processed Food Products Export Development Authority Act, 1985 for representing the interests of Indian companies and individuals involved in the growing, processing and exporting of agricultural products including basmati rice.
According to evidence filed with the ATMO, under the APEDA Act, basmati rice is listed as a ‘special product’ and the Authority must ensure the protection and regulation of the use of the term Basmati for certain rice and rice products. It also has power to register intellectual property rights for the term basmati and it is registered as a GI in India.
GIs and certification trade marks
A GI in the trade mark sense identifies a good as originating in a specific territory, region or locality where a particular quality, reputation or other characteristic is essentially attributable to its geographical origin.
In Australia, GIs can be protected by the certification trade mark system and this is the type of trade mark the Authority has sought for basmati.
A certification trade mark is one that indicates that goods or services meet certain standards. These can relate to the quality or composition of the product or services but in the case of GIs a certification trade mark will indicate that the goods have a particular geographic origin.
In Australia, certification trade marks for GIs include:
- STILTON (for cheese);
- DARJEELING (for tea);
- SCOTCH WHISKY (for spirits and spirit based beverages);
- TEQUILA (for specific alcoholic beverages); and
- CHAMPAGNE (for sparkling wine).
Trade Marks Office objects to registration of the term BASMATI
Certification trade mark applications, like standard trade mark applications must meet certain requirements before the ATMO will accept them for registration.
One of the requirements is that the certification trade mark must be capable of distinguishing goods or services certified by the applicant (in this case the Authority) from goods or services not so certified.
In determining whether a certification trade mark satisfies this requirement, the factors taken into account are:
- the extent to which the certification trade mark is inherently adapted to distinguish;
- the extent to which, because of use, the certification trade mark has become adapted to distinguish, and
- the extent to which because of any other circumstances, the certification trade marks has become adapted to distinguish.
The ATMO Hearing Officer explained the distinction between a standard mark and certification mark when considering whether a mark is capable of distinguishing as follows:
“A standard trade mark that entirely lacks inherent adaptation to distinguish would generally be unregistrable unless the applicant can establish that because of its use, the trade mark had developed a secondary meaning which the public perceives as an indicator of trade source. Once a sufficient level of recognition amongst relevant consumers has been established, the primary meaning of the trade mark as a descriptive or otherwise non-distinctive term becomes either superseded or supplemented by its secondary meaning as an indicator of trade origin. In contrast, as a certification trade mark is not an indicator of trade source, different considerations apply. The enquiry regarding capacity to distinguish does not relate to trade origin but rather whether the trade mark distinguishes goods certified as having some quality or characteristic absent from goods not so certified. As such, if a certification trade mark entirely lacks inherent adaptation to distinguish, it follows that an applicant must demonstrate that the certification trade mark as a result of its use or because of other circumstances has come to represent qualities and/or characteristics of the goods certified by the applicant or a person approved by the applicant.”
The Hearing Officer then assessed whether the term basmati satisfied this requirement by reference to the legal test for inherent adaptation to distinguish laid down by the High Court for standard trade marks.
This involves two steps:
- determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services; and
- then having determined the ordinary signification, the likelihood of the sign being desired for use by others.
Unsurprisingly, the Hearing Officer found that the ordinary signification of the term basmati is a particular variety of rice.
This finding was in part based on the Authority’s own evidence that indicated more than 70% of respondents to a survey associated the term basmati with rice. A significant portion of those surveyed associated it with rice from India or Pakistan, and the evidence showed that several others associated the term with rice from other countries, or Asia more broadly.
Turning to the second part of the High Court’s test, the Hearing Officer found it was “clear based on its ordinary signification that other traders would have a legitimate desire to use BASMATI in relation to rice and rice derived products, not certified by the Authority, and that it was therefore not inherently adapted to distinguish.”
The Hearing Officer did not accept that the term had, due to use in Australia or other circumstances, become capable of distinguishing the goods. This was despite the fact that BASMATI is registered as a GI in India and evidence that basmati rice exported to Australia had likely been certified by the Authority in India since at least February 2016. Muddying the waters was the fact that basmati rice is also exported to Australia from Pakistan. There was also evidence that the grain is grown in Nepal in the foothills of the Himalayas. This led the Hearing Officer to determine that Basmati was not a term that just referred to rice certified by the Authority, but also to rice from other traders that was not certified.
The Authority proposed a condition be added to a registration for the word mark to try to address the Hearing Officer’s objection:
It is a condition of registration that all product packaging of products which bear the mark with the approval of the registered owner will also prominently bear the words “Product of India” (or words to that effect).
However, the Hearing Officer did not consider this would assist to render the term basmati capable of distinguishing rice certified by the Authority from other rice that other traders may legitimately call basmati that originated outside of India.
Thus, the application for BASMATI has been rejected, at least for now as the Registrar’s decision has been appealed to the Federal Court.