July 15, 2011
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MALAYSIA: Ponni Rice: A Protected Geographical Indication?
In the recent case Agricultural & Processed Food Products Export Development Authority of India (APEDA) v. Syarikat Faiza Sdn Bhd,  2 MLJ 768, the High Court invoked the traditional concept of confusion and the provisions governing the registrability of a mark to protect the term ponni, which had become synonymous with a particular variety of rice originating from the Kaveri (also referred to as Ponni) Delta region in the southern Indian peninsula.
Although the High Court did not define ponni as a geographical indication, the decision is significant in that it shows the continued relevance of the traditional trademark law analysis to the protection of geographical indications even after the enactment of the Geographical Indications Act 2000 and the introduction into the Trade Marks Act 1976 of provisions against the registration of misleading geographical indications.
In this case, a Malaysian company dealing in rice was not permitted to retain exclusivity over the use of the name ponni for its rice variant.
The civil action initiated by six applicants from India against Syarikat Faiza Sdn Bhd requested an order to expunge and remove the registered trademark PONNI under the company’s name from the Malaysian trademark register. The applicants were the Agricultural and Processed Food Products Export Development Authority of India (APEDA), Nadu Agricultural University (TNAU), two farmers and two exporters.
APEDA, a statutory body under the government of India, is engaged in the development and promotion of exports of certain agricultural and processed food products from India, including a variety of rice known as ponni rice. TNAU, an agricultural university in the State of Tamil Nadu, is the creator of the term ponni and was responsible for developing the ponni rice variety. The farmers are cultivators of ponni rice in Tamil Nadu, and the exporters are rice exporters based in the city of Chennai in that state. On the issue of whether the applicants had standing to bring the action, the High Court held in the affirmative, as the applicants were, either singly or collectively, persons aggrieved under the Act.
On June 6, 2000, Syarikat Faiza Sdn Bhd filed for the registration as a trademark of the word ponni. Eventually the company obtained a certificate making it the registered proprietor of the trademark in Malaysia. APEDA and the other applicants contended that the trademark PONNI was an entry made on the register without sufficient cause and/or an entry wrongfully remaining in the register. The farmers and exporters claimed that the exclusive rights granted to the company for the use of ponni as a trademark in Malaysia could and would affect their ability to distribute and/or otherwise trade in ponni rice in Malaysia and elsewhere.
The High Court relied on two provisions in the Act in finding that ponni did not meet the requirements for registrability (namely, it was a descriptive word and not a coined term) and that use of ponni was likely to deceive or cause confusion and, hence, its registration by the respondent should have been prohibited. At the hearing, there was sufficient evidence to show that ponni rice was available for sale and consumption in India, Malaysia and many countries around the world prior to June 6, 2000. Ponni rice was recognizable in the trade and among consumers as the name of a variety of rice from the Tamil Nadu region as of the date of the trademark application. For that reason, the High Court judge held that ponni was not a coined word. Instead, he concluded, the word was directly descriptive of a particular variety of rice originating from the Tamil Nadu region of southern India. Hence, registration of ponni under the Act would prevent others from legitimately using it as a descriptor for a particular variety of rice originating from that region.
Accordingly, the company’s registered trademark PONNI was expunged and removed from the register.