No registration for rice variant geographical indication
The landmark class action taken by the Agricultural & Processed Food Products Export Development Authority of India (APEDA) and others against Malaysian company/rice giant Syarikat Faiza Sdn Bhd, in relation to the rice variant ‘Ponni’, received a lot of attention, especially since rice is a staple food in Malaysia and in the region.
Ponni rice is a derivative of a cross between the Taichung65 and Myang Ebos 6080/2 varieties. This particular hybrid was developed decades ago by Tamil Nadu Agricultural University (TNAU) and is widely cultivated in southern India. It was so named in tribute to the Kaveri Delta region there.
Faiza imported Sona Massoori Ponni rice from India and registered Ponni in June 2000 as a trademark for rice in class 30. Unfortunately for the Indian stakeholders, they did not monitor this mark in Malaysia and it was successfully registered here. Upon registration, Faiza began to send legal notices to other rice importers forbidding them to use Ponni in describing their products.
This scenario was reminiscent of the US granting a patent for Basmati rice to the company RiceTec in 1997, which led to years of legal nightmares for the Indian government to regain the rights. Lesson learned, the aggrieved parties (APEDA, TNAU, Indian farmers and two exporters) took Faiza to task in the Indian High Court in January 2010.
APEDA, the administrative body that safeguards and enforces the rights of Indian agriculturists, claimed that Ponni was wrongly entered in the trademarks register, as Faiza was neither the proprietor nor author of the name. The exclusive rights granted to Faiza over the usage of Ponni as a trademark may in turn open doors for it to be registered worldwide, which would severely affect the rights of many stakeholders to trade in Ponni rice.
Faiza swore it had acted in good faith, registering a mark it claimed to have expended millions in promoting and popularising. Interestingly, it did not deny the significance of Ponni’s geographical origins.
“In view of the fact that protection is territorial, countries that are rich in high-quality production and cultivation of goods of geographical significance should look to Malaysia for protection if the products are sold and well-received here.”
Justice Datuk Azahar Mohamed, in the court’s first geographical indication case, ruled that Faiza was not entitled to retain the Ponni registration. In elaborating, the judge recognised that Ponni (which means gold in Tamil) is descriptive of a variety of rice that is easily recognisable to consumers as originating from India.
Granting exclusive rights to Faiza would mislead consumers and bar others from fairly using Ponni.
One commentator noted that granting trademark rights to one party runs the risk of abuse, because the proprietor can package any variety of rice that resembles Ponni, use the brand and sell it to consumers when the real thing is running low in stock. This would damage Ponni’s reputation in the long run.
The judge correctly ordered that Faiza’s registration be expunged from the Register and the removal be published. Consumers will now have more choice of Ponni rice once distribution is extended by interested importers.
The Ponni case sets an exemplary precedent for protection of geographical indications in Malaysia, given that just 12 have been registered here since the Geographical Indications Act 2000 came into force. In view of the fact that protection is territorial, countries that are rich in high-quality production and cultivation of goods of geographical significance should look to Malaysia for protection if the products are sold and well-received here.
These would include chocolates from Switzerland, cheeses from Europe, wines and spirits, fruits and vegetables from US, and honey from New Zealand—all very popular with Malaysian consumers.
At the moment, ‘Scotch Whisky’ is registered as a geographical indication from abroad. The remaining 11 registrations are Malaysian indications, with our great states in Borneo contributing the most, ranging from pepper, tea and coffee, to seaweed and rice. Foreign owners need to step up protection efforts to deter local manufacturers from using, for example, the ‘Swiss’ indication or representation of red and white akin to the Swiss flag for chocolates.
Just before 2010 ended, Henry Goh became the agent for the first application in Malaysia for a cheese variety geographical indication from Italy.
Lim Eng Leong is in-house legal counsel at Henry Goh & Co Sdn Bhd. He can be contacted at: engleong@henrygoh.com
