Rice maker overturns trade mark in Malaysia

IP practitioners hope the case will raise awareness about Malaysia's GI system and lead to an increase in registrations.

"Companies have sat back and have not registered the GIs that they should have," said Karen Abraham, a partner of Shearn Delamore in Kuala Lumpur, which advised the organisations representing the Indian rice growers in the case.

The dispute was over a trade mark for Ponni rice. In the Tamil language the word Ponni means "gold" and the Cauvery River in South India is also known as the Ponni river. Ponni rice is grown on the banks of this river in the Tamil Nadu and Karnataka regions of India and is known for its low starch content.

The Tamil Nadu Agricultural University, one of the parties in the case, developed the rice and began using the word Ponni to describe it in 1971. It is popular with Indians living in Malaysia, Singapore and in the Middle East.

Malaysian importer Syarikat Faiza registered the trade mark Ponni in Malaysia for rice and then sent letters to other importers warning them that they were infringing its trade mark.

When the registration became known in India it revived memories of the dispute over a US patent for Basmati rice. "The rice could have been grown in Malaysia or Thailand and called Ponni," said Abraham.

A group of Indian organisations, led by the Agricultural and Processed Food Products Export Development Authority of India (APEDA), which helps to enforce India's GIs, asked the IP High Court in Kuala Lumpur to remove the Ponni trade mark from the Registry.

However, a GI application for Ponni rice in India is still pending and no application has yet been made in Malaysia, which does not have many GI registrations.

"Locally there is not much awareness of GIs," said Geetha Kandiah, a lawyer with Kass International in Kuala Lumpur.

During the trial, Syarikat Faiza claimed that it had invented the word "Ponni" to describe rice, said Abraham.

But Justice Azahar Mohamed of the Malaysia IP High Court rejected this argument citing the sections of Malaysia's Trade Mark Act that deal with confusion to consumers and the fact that marks that describe a geographical area should not be registered.

The case was filed on January 22 and concluded on August 17, something that Kandiah said shows the efficiency of Malaysia's IP High Court, which was established in July 2007.

An article in the October issue of Managing IP magazine will look at how the Comité Interprofessionnel du Vin de Champagne, which looks after the Champagne GI, managed to achieve successful registrations in Thailand and Indonesia. This will be online on October 1.

(Source: Managing IP, 29 September 2010)