Basmati rice as transnational GI?
07 August 2024
India tried to get “basmati” registered as a trademark in New Zealand, but their attempt was unsuccessful.
In June 2024, the Intellectual Property Office of New Zealand (IPONZ) rejected India’s trademark application for basmati rice. According to IPONZ, rice growers in other nations also produce the aromatic rice variety. Therefore, India cannot claim exclusive rights to the globally popular product.
Joseph Bracewell, Associate, Tompkins Wake, Auckland
Joseph Bracewell, an associate at Tompkins Wake in Auckland, is not surprised with the decision, saying the standard for distinctiveness as a trademark is the same for certification marks as for standard trademarks. “IPONZ is unlikely to grant a registration where there is evidence that other traders, or groups of traders in this case, are using a mark in good faith,” he said. “The examiner reasonably took into account the inability of the proposed Basmati mark to distinguish between the applicant, which are the Indian rice producers and other producers in the ‘Basmati Growing Area’ but outside of India, in particular, Pakistan. It appears that that potential risk was supported by the applicant’s own evidence.”
The concept of a transnational geographical indication (GI) came into play. According to Bracewell, Assistant Commissioner of Trade Mark Wendy Aldred made an interesting comment in Paragraph 36 of IPONZ’s decision. The said comment begs the question of whether Basmati could function as a transnational GI.
The comment reads: “The applicant has submitted that the fact that Basmati is a ‘transnational geographical indication’ should not automatically preclude registration as a certification mark. I accept that submission, as far as it goes, but it seems to me that for such a mark to be registered, the application would need to extend to all products that could legitimately claim the description conferred by the certification mark. An example might be where a geographical indication coexists in two countries, and a joint application for a certification mark is made by the relevant certifying authorities of both countries.”
“Whether that’s practically possible is another question,” remarked Bracewell, “or whether the applicant has sufficient influence with the Indian government to press for legislative recognition as a GI in New Zealand through trade agreements.”
He added there was a similar rejection recently, involving a certification mark for Gruyere filed by cheese producers from the Gruyère region of Switzerland, which is outside the EU. Gruyere was also registered as a GI for cheese produced in France’s Gruyère region.
- Espie Angelica a. de Leon
