Friday, August 20, 2010

India Wins Trademark Case - 'Ponni' Rice

Background: On June 6, 2000, Faiza (Owner of one of the Malaysian Supplier, Manufacturer Company) filed a trade mark application for the registration of the name “Ponni” in relation to rice variety. The trademark was subsequently advertised in the Government Gazette on Oct 27, 2005 and was entered in the Trade Mark Register on Jan 20, 2006, and the registration number was provided as 00007172. The company received approval to use the trade mark on June 6, 2000 from the Intellectual Property Corporation of Malaysia.

What is Ponni rice: 'ponni' rice is a non-basmati rice variety mainly grown near the Kaveri Delta in South India. Tamil Nadu Agricultural University (TNAU) developed “Ponni” rice variety in 1971. ‘Ponni’ is a hybrid variety of ‘Taichung65 and Myang Ebos 6080/2′. White ‘Ponni’ rice was developed by Tamil Nadu Agricultural University in 1986 and is cultivated in thousands of acres of land in India.

What is APEDA: Agricultural and Processed Food Products Export Development Authority of India (APEDA).

Parties & Representative: A civil action filed by APEDA ,TNAU, Indian farmers and two exporters(Vishnu Kumar Traders Pvt Ltd & K.K Imports and Exports) on Jan 22, 2010 in The Malaysian High Court in Kuala Lumpur against local firm, Faiza Sdn Bhd, for use the ‘Ponni' label for its rice product. As the rice variety was developed by TNAU, and the same is popular in South India, since the year of its development. The plaintiffs were represented by Counsel Karen Abraham while Faiza Sdn Bhd by Counsel A. Chinnapalanidev.

The High Court decision dated 17 Aug, 2010 by Justice Azahar Mohamed:

1. Syarikat Faiza Sdn Bhd was not entitled to retain the word “Ponni” exclusively when selling rice.

2. “Ponni” was a descriptive variety of rice originating from Tamil Nadu and that it was recognisable to consumers in such a manner.

3. Syarikat Faiza was not entitled to register the word “Ponni” as a trade mark.

4. The entry of Ponni trade mark in the Register of Trade Marks in Malaysia is a entry wrongly made and wrongfully remaining in the register under Section 45(Rectification of the register) of the Trademark Act, 1976.

5. "The word 'ponni' is not an invented word of the Malaysian company. and that the word was another name for the Kaveri River in Tamil language. That rice variant is grown in that river delta.

6. Use of “Ponni” by respondent as trademark was bound to cause confusion and that consumers would be misled.

7. The “Ponni” trade mark registration by Faiza be expunged and removed from the Malaysian Register of Trade Marks. The judge also directed the Registrar of Trade Marks to rectify the matter by removing the whole entry relating to the trademark registration and its removal to be published in the Government Gazette.

It is a positive development. We have succeeded in preventing somebody from appropriating this brand, and as and when the ban on non-basmati rice export is lifted, Ponni rice exporters would benefit.”

The victory of ‘Ponni' rice is a positive development for developer, growers and exporters. Prevention of inappropriate and unauthorized use of this brand would benefit the Ponni rice exporters would once the ban on non-basmati rice export is lifted. We are thankful for the timely action taken by the all stakeholders.

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