“Ponni” Not Free For Use, Court Decides
19 October 2012
Malaysia’s IP Court has sided with six Indian parties seeking to stop the use of the word Ponni in the sale of rice in Malaysia, recognizing that the term is a geographical indication for a rice-growing region of India.
The Applicants, consisting of six related parties from India, had sued the registered owner of the Ponni mark for obtaining the exclusive rights to the word Ponni by erroneous means. The six Applicants included the Agricultural and Processed Food Products Export Development Authority of India (APEDA), Tamil Nadu Agricultural University (TNAU), Indian rice farmers and two exporters; the Respondent was Syarikat Faiza Sdn Bhd, which conducted its rice business under the name of Beras Taj Mahal and/or Beras Faiza Herba Ponni (hereinafter referred to as Faiza).
The Applicants contended that Faiza should not be given exclusive rights to the word Ponni and that the entry of the mark in the Malaysian Register of Trade Marks was wrongly made. The Applicants asked for the mark to be expunged from the Registry, as the registered mark had, prior to proceedings, affected two of the six Applicants in exporting Ponni rice into Malaysia.
In arriving to the recent conclusion (date of judgement being August 17, 2010), the Court based its justifications on basic trademark law principles of non-confusion to consumers and non-registrability of marks containing descriptive indications, aside from recognizing the importance of protection of a geographical indication (GI). In regard to this, Justice Azahar Mohamed from the Malaysian IP Courts opined that the Ponni mark in dispute was deemed descriptive of a variety of rice originating from the Kaveri Delta region in Tamil Nadu. The mark was not invented by Faiza, but instead is an alternative name to the said river in Tamil, and was first used on rice products by TNAU in 1971.
In allowing the expungement application, the Court held that the use of the Ponni mark by Faiza would confuse and mislead consumers. The Court also ordered the Registrar to publish the removal of the registration in the Government Gazette.
This decision, to an extent, suggests that Malaysian Courts are paying close attention to trademarks incorporating GI. Interestingly, this case was successful even though the Ponni mark was not registered as a GI in Malaysia. Regardless of this fact, associations that own GI abroad are advised to be on the guard against such misuse of their marks especially in countries that import products bearing the GI. Registration of the GI in Malaysia and other ASEAN countries is encouraged as this will support any claim in Court should disputes arise. On the other hand, companies or individuals intending to use geographical locations as part of their marks are encouraged to first seek advice from intellectual property professionals before expending time, effort and money on businesses using such marks; especially when the courts have shown willingness to readily dismiss the marks.
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Rice from the Kaveri Delta region in India was given GI protection in Malaysia.
