Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India
[2022] ATMO 228
•22 December 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application numbers 1991950 – BASMATI and 1991951 BASMATI with device – both in Class 30 – in the name of Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India.
| Delegate: | Blake Knowles |
| Representation: | Applicant: Luke Merrick of counsel and Stephen Stern of Corrs Chambers Westgarth. |
| Decision: | 2022 ATMO 228 Request to be heard under s 176(1A) of the Trade Marks Act 1995 (Cth) in relation to grounds for rejection under ss 177 and 43 of the Act – grounds for rejection under s 177 maintained in relation to BASMATI word mark – trade mark rejected – grounds for rejection under s 43 in relation to BASMATI with device withdrawn – trade mark to proceed to Australian Competition and Consumer Commission for assessment. |
Background
This is a decision on examination of trade mark application numbers 1991950 and 1991951 (‘Applications’) filed on 26 February 2019 (‘Relevant Date’) by Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India (‘Applicant’). The Applications are both for Class 30: Rice (‘Goods’) for the following certification trade marks (collectively, the ‘Certification Marks’):
Trade Mark Number: 1991950
Trade Mark: BASMATI
(‘Word Mark’)
Trade Mark Number: 1991951
Trade Mark:
(‘Composite Mark’)
The Applicant submits that the term ‘Basmati’ is a geographical indication (‘GI’) in respect of rice grown in the Himalayan foothills of the Indian subcontinent, encompassing areas of India and Pakistan. The Applicant is the Indian Government authority responsible for regulation of Basmati as a GI in India, and is also responsible for seeking its protection in foreign countries.
Australia is party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPS’), which defines and mandates protections for GIs.[1] Article 22(1) of TRIPS defines GIs as indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. Article 22(2) of TRIPS requires that Members provide legal means for interested parties to prevent the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good, and any use of a GI which constitutes an act of unfair competition. Article 23 includes additional protections for wine and spirit GIs.
[1] The TRIPS Agreement is Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization.
Australia complies with its obligations under TRIPS in multiple ways. GIs for all goods may be protected by registration as certification trade marks under the Trade Marks Act 1995.[2] Australia also administers a system of registration of geographical indications for wines under the Wine Australia Act 2013 (Cth). In addition, provisions of Commonwealth, State, and Territory laws that prohibit misleading or deceptive conduct in trade or commerce, along with the common law tort of passing off, provide other legal mechanisms for protection of GIs.
[2] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).
Registration of certification trade marks for GIs have been granted in Australia for a variety of goods, with some examples including STILTON (for cheese), DARJEELING (for tea), PARMA (for pig meat), SCOTCH WHISKY (for spirits and spirit based beverages), TEQUILA (for specific alcoholic beverages), and NAPA VALLEY (for wine).
Examination of Applications
The Applications were examined as required by s 31. The examiner raised grounds for rejection under s 177 against the Word Mark on the basis that it was not sufficiently inherently adapted to distinguish the Goods because ‘Basmati’ is a variety of rice. The Composite Mark was not initially subject to any grounds for rejection. However, both Applications were subject to a formalities objection on the basis that the Applicant had failed to provide copies of the rules governing the use of the Certification Marks as required by s 173(1).
The Applicant filed a response to the examination reports including submissions and evidence in response to the examiner’s objection to the Word Mark under s 177, and copies of the rules governing use of the Certification Marks (‘Certification Rules’). However, the examiner maintained the ground for rejection raised under s 177 against the Word Mark on the basis that Basmati rice is grown in large quantities in both India and Pakistan, and the evidence provided did not indicate that the Word Mark was capable of distinguishing goods certified by the Applicant from goods not so certified. Further, the examiner raised late grounds for rejection against both the Certification Marks under s 43 on the basis that their use was likely to deceive or cause confusion. That objection is explained further below.
Counsel for the Applicant subsequently discussed the matter with a Deputy Registrar and further correspondence was exchanged between the examiner and counsel. The Applicant proposed amendments to the Certification Rules and a condition of registration to overcome the concerns raised by the examiner. The examiner, after considering these proposals, indicated his intention to maintain the grounds for rejection under s 177 (against the Word Mark) and under s 43 (against the Word Mark and Composite Mark).
The Applicant requested a hearing by videoconference. The matter was heard before me, as a delegate of the Registrar of Trade Marks, on 24 August 2022. The Applicant was represented by Luke Merrick of counsel and Stephen Stern, partner of Corrs Chambers Westgarth. During the hearing, I asked whether the Applicant would be open to additional limitations or conditions of registration if they would overcome the grounds for rejection. Counsel indicated that this would depend on the nature of the conditions or limitations.
10. After making submissions regarding the grounds for rejection, counsel requested that the hearing be adjourned so that another hearing might be scheduled if necessary to hear further submissions on any proposed limitations and/or conditions of registration. Given the ex parte nature of this matter, I considered that counsel’s proposal was reasonable and adjourned the hearing. However, as my decision was ultimately not to propose acceptance on the basis of limitations and/or conditions of registration, a further hearing was not scheduled. The Applicant was informed of this on 7 December 2022.
Evidence
11. The Applicant relies on several declarations, namely:
(i)Declaration of Dr Tarun Bajaj, director of the Applicant, made on 3 June 2020, with Exhibits TB-1 to TB-13.
(ii)Declaration of Stephen Stern, partner of Corrs Chambers Westgarth, made on 9 June 2020, with Exhibits SMS-1 and SMS-2.
(iii)Declaration of Anoushka Tait, solicitor of Corrs Chambers Westgarth, made on 9 June 2020, with Exhibits AIT-1 and AIT-2.
(iv)Declaration of Arvinder Singh (made in relation to the Applicant’s opposition to trade mark application number 1490752 for AUSMATI), made on 17 May 2013, with Exhibits APS-1 and APS-2.
(v)Declaration of Gurmeet Kohli (made in relation to the Applicant’s opposition to trade mark application number 1490752 for AUSMATI), made on 24 May 2013, with Exhibit GSK-1.
(vi)Declaration of Amit Patel (made in relation to the Applicant’s opposition to trade mark application number 1490752 for AUSMATI), made on 16 August 2013, with Exhibit RKP-1.
(vii)Declaration of Satnam Arora (made in relation to the Applicant’s opposition to trade mark application number 1490752 for AUSMATI), made on 16 August 2013, with Exhibits SA-1 to SA-2.
Bajaj declaration
12. Mr Bajaj declares that the Applicant is a statutory authority of the Government of India under the Ministry of Commerce and Industry established under the Agricultural and Processed Food Products Export Development Authority Act, 1985 (‘APEDA Act’). The Applicant has responsibility for representing the interests of Indian individuals and companies involved in the growing, processing, and exporting of various agricultural products, including Basmati rice.
13. Basmati rice is listed as a Special Product under the APEDA Act, and the Applicant is required to ensure the protection and regulation of use of the name Basmati in relation to specific, defined rice and rice products. The Applicant is empowered by the APEDA Act to register intellectual property rights in the term Basmati and has registered it as a geographical indication in India under the Geographical Indications of Goods (Registration & Protection) Act, 1999.
14. Basmati has a recorded history in India dating back at least 200 years. The name ‘Basmati’ originates from the Sanskrit ‘vas’ (meaning ‘aroma’) and ‘mati’ (meaning ‘ingrained from origin’). From the 19th century, Basmati rice has been the subject of extensive research aimed at increasing the yield and quality of the rice grown.
15. Basmati rice has several unique characteristics, namely, its nutty aroma, long and slender grains, soft texture, delicate curvature, comparatively low glycaemic index, little or no breadthwise swelling on cooking, high grain integrity on cooking, and linear kernel elongation on cooking. These unique characteristics are a result of a combination of factors including agro-climatic conditions in the Basmati growing area located in a particular region of the Indian subcontinent being a belt of northern India and adjacent parts of Pakistan below the foothills of the Himalayas, forming part of the Indo-Gangetic plains (‘Growing Area’). Further, in India, the rice variety used must be a Notified Basmati rice variety under the Indian Seeds Act, 1986. Seed varieties must undergo an extensive assessment and testing process before being notified as a Basmati rice variety.[3] Various steps in production must also take place in order for rice to qualify as Basmati. These steps relate to transplanting, spacing, watering, fertilising, harvesting, and threshing of plants.
[3] The relevant standards are annexed to Mr Bajaj’s declaration and the testing process is described in detail. For the sake of brevity, it is not necessary to repeat this information. I note that as of the date of Mr Bajaj’s declaration, there were 32 notified varieties of Basmati rice.
16. The area of India forming part of the Growing Area comprises the states of Punjab, Haryana, Delhi, Himachal Pradesh, Uttarakhand, and parts Uttar Pradesh and Jammu & Kashmir (‘Indian Growing Area’).
17. All Indian exporters and exports of Basmati rice are required to be registered with the Applicant. The Applicant works with the Basmati Export Development Foundation (‘BEDF’) to engage in activities regarding quality seed production, technology transfer, and authentication of Basmati rice quality. BEDF is the public authority responsible for verification of compliance with Basmati specifications and is authorised by the Applicant to administer the Basmati geographical indication. Controls ensuring the authenticity and purity of Basmati rice are carried out by BEDF. Indian customs officials draw samples for variety identification and these are sent for analysis to BEDF.
18. Australia is one of the top 15 countries (in terms of gross sales) to which Basmati rice is exported from India. Statistics provided indicate that Basmati rice has been exported to Australia from India in significant quantities since 1987, with a particularly notable increase from 2011.
19. The subcontinental origin of Basmati rice is referred to in exhibits annexed to Mr Bajaj’s declaration, including various publications, trader websites, and on product packaging. Regarding the latter, I note that one product (Uncle Ben’s) refers to the rice as being ‘A subtle blend of the best Basmati, from India & Pakistan’. An extract of the contemporaneous website of Sunrice Australia also states ‘The word Basmati is like Champagne – a true Basmati is grown in the foothills of the Himalayas. Our SunRice Basmati rice is sourced from the best regions that adhere to our strict quality standards’.
Stern declaration
20. Mr Stern declares that he commissioned an omnibus survey (‘Survey’) from an independent professional market research company, Ipsos Observer/I-View, to establish the distinctiveness of the name Basmati in Australia for rice.
21. The Survey had a total of 1,009 respondents aged 18 or older, distributed nationally across Australia. The results of the Survey indicated that:
(i)Approximately 70% of respondents associated the word Basmati with rice;
(ii)Approximately 32% of respondents gave a response connecting Basmati rice with India and/or Pakistan.
22. A copy of the results of the Survey are annexed to Mr Stern’s declaration. I note that answers to the question regarding where Basmati originates that did not refer to India or Pakistan include locations such as Asia, Bangladesh, Thailand, Italy, Vietnam, Sri Lanka, Indonesia, China, USA, or rice fields or paddies. However, the majority of answers that were not ‘India/Pakistan’ were ‘don’t know/unsure’.
Tait declaration
23. Ms Tait declares that a member of her team undertook online searches on the Trove and Westlaw databases for articles relating to Basmati rice. Copies of articles and advertisements from various publications (including newspapers from across Australia) prior to the Relevant Date are annexed to the declaration. Many of the articles are recipes containing Basmati rice.
Singh declaration
24. Mr Singh declares that he is a partner of M/s Amar Singh Chawal Wala (‘ASCW’) and has been involved in the rice trade for over 27 years. ASCW is one of India’s major millers, exporters, and processors of Basmati rice. All Basmati rice exported by ASCW comes from India, and such rice has been sold in Australia under various brands in all major supermarket chains (including Coles and Woolworths) and in many smaller grocery stores.
25. Mr Singh opines that Basmati rice has unique characteristics and is higher priced than other varieties, noting that consumers are willing to pay a premium for it. Further, due to the popularity of Indian cuisine in Australia, there is a very strong association in the minds of Australian consumers between the name Basmati and the Indian subcontinent.
Kohli declaration
26. Mr Kohli declares that his company GS Pacific Marketing (Aust) Pty Ltd has been involved in the importation and sale of food products in Australia since 2005 and that it has imported and sold a significant quantity of Basmati rice in Australia.
27. Mr Kohli opines that Basmati rice has a tremendous reputation among members of the Australian food industry and consumers, that that it has unique characteristics due to the agro-climatic conditions prevalent in northern parts of India and adjacent parts of Pakistan.
Patel declaration
28. Mr Patel declares that his company Radhe Wholesale & Retail Pty Ltd has sold significant quantities of Basmati rice in Australia since 2010.
29. Mr Patel opines that Basmati rice has distinctive qualities, and that he has only ever seen rice sourced from India or Pakistan using the name ‘Basmati’.
Arora declaration
30. Mr Arora declares that his company, M/s Kohinoor Foods Limited (‘KFL’) is one of India’s largest exporters, millers, and processors of Basmati rice. KFL’s flagship brand ‘Kohinoor’ is sold in several countries including Australia (which is one of KFL’s largest export markets). KFL sources all of its Basmati rice from India.
31. Mr Arora opines that Basmati rice has unique characteristics derived from the growing region in Indian and Pakistan, climatic conditions, and harvesting practices. Mr Arora also opines that Basmati rice is extremely popular among Australians due to their affinity for Asian cuisine, and that Basmati rice is associated by Australian consumers with India.
Certification Rules
32. The Applicant filed an amended version of the Certification Rules prior to the hearing. The amendments acknowledge that Basmati rice is also grown in the part of the Growing Area located in Pakistan and confirm that the rules and associated licensing program apply only to Basmati rice from the Indian Growing Area. The rules also specify that the phrase “Product of India” will be displayed prominently on retail packaging for the Goods.
33. For the purposes of this decision, it is not necessary to provide a detailed summary of the Certification Rules. However, I note that the Certification Rules state that the Certification Marks shall only be applied to or used in relation to rice that satisfies the characteristics of Basmati rice as set out in Annexure 2, which contains various technical and other requirements. The Certification Rules apply to the use of the Certification Marks by licensed importers and packers of Basmati rice. I also note that the rule state that ‘This licensing program affords APEDA the necessary information and control over the Australian rice industry to ensure that rice sold in Australia under the Certification Trade Mark adheres to the standards for Basmati Rice as set forth in these Rules.’
Discussion
Section 177
34. The ground for rejection raised under s 177 relates only to the Word Mark. As such, I will confine my comments to the Word Mark, noting that the examiner’s decision not to raise a ground for rejection under s 177 in relation to the Composite Mark appears to be sound.
35. The registration of certification trade marks is governed by Part 16 of the Act. Section 169 defines a certification trade mark as follows:
A certification trade mark is a sign used, or intended to be used, to distinguish goods or services:
(a)dealt with or provided in the course of trade; and
(b)certified by a person (owner of the certification trade mark), or by another person approved by that person, in relation to quality, accuracy or some other characteristic, including (in the case of goods) origin, material or mode of manufacture;
from other goods or services dealt with or provided in the course of trade but not so certified.
Note: the goods or services certified may be those of any person, including the owner of the certification trade mark or any person approved by the owner for the purpose of certifying goods or services.
36. Under s 176(1), the Registrar must accept an application for a certification trade mark if the application is made in accordance with the Act, there are no grounds for rejecting it, and provided that a certificate has been issued by the Australian Competition and Consumer Commission (‘Commission’) under s 175(2).
37. Under s 176(2), the Registrar may accept an application subject to conditions or limitations. The term ‘condition’ is not defined in the Act. However, s 6 defines a limitation as including limitations of the exclusive right to use a trade mark given by the registration, including limitation of that right as to the mode of use, use within a territorial area within Australia, or use in relation to goods or services to be exported.
38. Under s 170, the provisions of the Act relating to trade marks (other than sections 8, 26, 33, 34, 41, 121, and 129, paragraph 27(1)(b), and Parts 9 and 17) also apply to certification trade marks. As s 41 does not apply to certification trade marks, the assessment of distinctiveness of certification trade marks is made under s 177, which states:
177 - Additional ground for rejecting an application or opposing registration—certification trade mark not distinguishing certified goods or services
(1) In addition to any other ground on which:
(a)an application for the registration of a certification trade mark may be rejected; or
(b)the registration of a certification trade mark may be opposed;
the application must be rejected or the registration may be opposed if the trade mark is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified.
(2) In deciding whether or not the certification trade mark is capable of so distinguishing goods or services certified by the applicant or an approved certifier, the Registrar must take into account:
(a)the extent to which the certification trade mark is inherently adapted so to distinguish those goods or services; or
(b)the extent to which, because of its use or of any other circumstances, the certification trade mark has become adapted so to distinguish those goods or services.
39. Counsel for the Applicant submitted that IP Australia's approach to the Applications indicated a reluctance by Australia to give protection to transnational GIs. My role in deciding this matter is not to discuss broader policy around Australia’s approach to the protection of transnational geographical indications, although I note there is no express prohibition in the Act against the protection of such GIs. My role is to determine whether the Word Mark is capable of distinguishing goods certified from goods not so certified. The fact that the Word Mark might be characterised as a transnational GI is relevant to my decision insofar as it relates to the assessment to be made under s 177.
40. The test under s 177 is not directly analogous to the test for determining the distinctiveness of a standard trade mark under s 41. The former deals with the capacity of a certification trade mark to distinguish goods certified from goods not so certified. The latter deals with the capacity of a standard trade mark to distinguish the goods of one trader from another. The differences in the statutory tests reflect the particular distinguishing function that a certification trade mark plays with regard to quality or characteristics of the relevant goods, as opposed to a distinguishing function in relation to trade origin.
41. Under s 177(2), there are three factors that are relevant to determination of capacity to distinguish of a certification trade mark, namely (i) the extent to which the certification trade mark is inherently adapted to distinguish, (ii) the extent to which, because of use, the certification trade mark has become adapted to distinguish, and (iii) the extent to which because of any other circumstances, the certification trade mark has become adapted to distinguish. These matters must be considered in the context of the certifying function performed by a certification trade mark, including in cases where a certification trade mark is a GI. Section 177 also differs from s 41 in that it does not set out different assessments for trade marks with some inherent adaptation to distinguish and no inherent adaptation to distinguish. I note that the Working Party[4] that developed recommendations for what is now the Act considered the function of a certification trade mark and recommended that the standard for distinctiveness for certification trade marks be ‘capable of distinguishing’, a level more similar to the less stringent test for registration of trade marks under Part B of the former Trade Marks Act 1955. This is now reflected in s 177.
[4] Working Party to Review the Trade Marks Legislation Report “Recommended Changes to the Australian Trade Marks Legislation”, presented to the Minister for Science and Technology, July 1992, p 57 (see also p 51 of Appendix 4 for background).
42. A standard trade mark that entirely lacks inherent adaptation to distinguish would generally be unregistrable unless the applicant can establish that because of its use, the trade mark had developed a secondary meaning which the public perceives as an indicator of trade source. Once a sufficient level of recognition amongst relevant consumers has been established, the primary meaning of the trade mark as a descriptive or otherwise non-distinctive term becomes either superseded or supplemented by its secondary meaning as an indicator of trade origin. In contrast, as a certification trade mark is not an indicator of trade source, different considerations apply. The enquiry regarding capacity to distinguish does not relate to trade origin but rather whether the trade mark distinguishes goods certified as having some quality or characteristic absent from goods not so certified. As such, if a certification trade mark entirely lacks inherent adaptation to distinguish, it follows that an applicant must demonstrate that the certification trade mark as a result of its use or because of other circumstances has come to represent qualities and/or characteristics of the goods certified by the applicant or a person approved by the applicant.
43. The authors of Shanahan’s Australian Law of Trade Marks & Passing Off state that:[5]
If, as is required by s 177, a certification mark is to distinguish “goods or services certified… from goods or services not so certified”, it must be apparent to those encountering the mark in use that the product in question has been certified in some way.[6] Indeed the previous United Kingdom legislation expressly required that the Registrar have regard to “the desirability of securing a certification trade mark shall comprise some indication that it is such a trade mark”,[7] and in practice the British Registrar insisted that the words “certification trade mark” appeared in or in close proximity to the trade mark.[8] In Australia, neither the 1995 Act nor the Registrar’s practice demands such a statement, but its inclusion must necessarily assist in establishing distinctiveness,[9] and a trade mark could not function as a certification mark unless the public were educated in that way or by an appropriate advertising campaign (or more usually both) that the trade mark was in fact a certification mark.
[5] M Davison, I Horak, Shanahan’s Australian Law of Trade Marks and Passing Off, online 7th edition, 2022 Thomson Reuters, [55.15]
[6] Wilson’s and Mathieson’s Ltd’s Application (1929) 46 RPC 80 at 89 (Ch D).
[7] Trade Marks Act 1938 (UK), First Sch, para 1(3); see also Trade Marks Act 1963 (South Africa), s 52(6).
[8] Dawson N, Certification Trade Marks Law and Practice (1988), p 17.
[9] See the Report of the Departmental Committee, Goschen Report (Cmd 4568, 1934), presented to Parliament in 1934, paras 229(iv) and 230(6).
44. Respectfully, I disagree with this assessment and do not find the authorities cited in support of it to be particularly authoritative in interpreting the current legislation. The Australian Working Party[10] that in 1992 made recommendations for the Act recommended there be a presumption of registrability when examining a trade mark application, reflected in section 176 in respect of certification trade marks. Section 177 requires only that the certification trade mark be capable of distinguishing due to its extent of inherent adaptation, or the extent to which because of its use or other circumstances it has become adapted to distinguish the relevant goods or services. A certification trade mark need not contain in itself an express or implied indication that goods in relation to which it is used have been certified, nor should it always be necessary that the public be educated that a sign is acting as a certification trade mark. A certification trade mark could in some circumstances distinguish in fact even if the public is not directly informed of its certification function. This may often be the case with certification trade marks corresponding to GIs. By way of illustrative example, many consumers may not consciously perceive that the term SCOTCH WHISKY is a certification trade mark. However, many consumers who purchase spirits would at the very least understand that SCOTCH WHISKY indicates that such whisky originates from Scotland and/or has various qualities, notwithstanding that the certification trade mark function of the term is not stated in the mark itself or necessarily reinforced among the public by other methods.
[10] Working Party to Review the Trade Marks Legislation Report “Recommended Changes to the Australian Trade Marks Legislation”, presented to the Minister for Science and Technology, July 1992, p 42.
45. Under s 177, it is first necessary to determine the level of inherent adaptation to distinguish of the Word Mark. Regrettably, there are no binding authorities that deal with the interpretation and application of the test under s 177. As such, it is informative to turn to the well-established authorities that considered s 41 and its predecessors to provide guidance on the question of ‘inherent adaptation to distinguish’. This issue is one on which the respective tests under s 177 and s 41 conceptually differ the least (if at all). The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:
His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[11]
[11] (1964) 111 CLR 511, 514 (Kitto J).
46. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[12]
[12] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).
47. Turning to the Word Mark, the ordinary signification of the term Basmati, as demonstrated by the Applicant’s own evidence, is a particular variety of rice. The Applicant’s survey results indicate that over 70% of respondent’s associated Basmati with rice, and a significant portion of those associated Basmati with rice from India or Pakistan. Several others associated Basmati with rice from other countries, or from Asia more broadly. It is therefore clear based on its ordinary signification that other traders would have a legitimate desire to use Basmati in relation to rice and rice derived products that are not certified by the Applicant, and that therefore it is not to any extent inherently adapted to distinguish.
48. I must now consider whether Basmati is capable of distinguishing because of its use by or under the authorisation of the Applicant, or any other circumstances.
49. I note that other provisions of the Act dealing with ‘use’ generally require consideration of use ‘as a trade mark’ as opposed to mere descriptive use. In Coca-Cola v All-Fect Distributors Ltd, the Full Bench of the Federal Court held:
Use 'as a trade mark' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... That is the concept embodied in the definition of 'trade mark' in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.[13]
[13] [1999] FCA 1721, [17] (Black CJ, Sundberg, and Finkelstein JJ).
50. Some caution must be exercised when applying this principle in relation to certification trade marks, given that the purpose of a certification trade mark is not to distinguish the goods of one trader from another, but rather to distinguish goods certified from goods not so certified. However, it is reasonable to assume that any use for the purpose of s 177(2) should be use where the certification trade mark performs some distinguishing function, as opposed to purely being used in a descriptive context (and noting that there is often no clear dichotomy between these two manners of use).[14]
[14] Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [146] (Katzmann J).
51. With regard to ‘other circumstances’, this term is not defined in the Act. Further, although a number of cases have described various categories of relevant ‘other circumstances’ in the context of standard trade marks, these instances are of limited guidance in considering capacity to distinguish of a certification trade mark. I consider that the term ‘other circumstances’ would encompass any circumstances which may indicate that a certification trade mark is capable of distinguishing. One such circumstance, in the context of a certification trade mark for a GI, is the extent to which the GI is protected or regulated in the country in which the relevant geographical area is located. However, while this factor may advance a case for registrability, ultimately the question is whether the certification trade mark is capable of distinguishing goods certified that are sold in the Australian market, and all relevant circumstances must be considered.
52. The evidence indicates that significant amounts of Basmati rice have been exported to Australia over many years. However, it is not clear to what extent the rice exported to Australia under the term Basmati has been certified by the Applicant. Mr Bajaj indicates that the Applicant has represented the interests of Indian rice growers since 1995. My own search of the Indian Geographical Indications Registry indicates that the Applicant filed Basmati as a certification trade mark in India in 2008, and a certificate issued on 15 February 2016. As such, while I accept that any Indian rice labelled as Basmati exported to Australia after 15 February 2016 and before the Relevant Date was likely certified by the Applicant in India under a stringent regulatory regime, the situation with regards to rice exported before February 2016 is less clear.
53. The evidence is also unclear as to the proportion of Basmati exported to Australia that originates from India and Pakistan respectively. My own research indicates that Basmati rice sold in Australia is likely almost always of Indian or Pakistani origin, and that India and Pakistan account for the vast majority of global exports of Basmati rice. However, my research also suggests that the Growing Area, in addition to including parts of Pakistan, also possibly includes areas of the Himalayan foothills that are located in Nepal which border the Indian Growing Area. While my research does not suggest that Basmati rice originating from Nepal is exported to Australia, it is possible that rice varieties traditionally considered as Basmati are grown in Nepal under the same or very similar agro-climatic conditions as those prevailing in the Growing Area of India or Pakistan, and that growers of such rice may wish to export it to Australia in future.
54. The Applicant also expressly acknowledges the rights of Pakistan in relation to Basmati. The Applicant submits:
‘…it must also be acknowledged (as IP Australia has in the IP Australia Email) that the name BASMATI has been used (appropriately and lawfully) in connection with BASMATI rice cultivated in Pakistan’.
The Applicant goes on to say:
‘…the acceptance for registration would have no bearing at all on the rights held by Pakistan in relation to the name BASMATI. If Pakistan has any objections to the applications, it could oppose registration of the BASMATI Certification trade marks at an appropriate stage. Such opposition proceedings are the proper forum for the consideration and balancing of such competing rights. Further, an appropriate Pakistani authority would be free to make a certification trade mark application as it sees fit. That application could be pursued (for example) on the basis of honest concurrent use.’
55. I do not agree that any competing interests of Pakistani traders (or other traders from areas of the Indian subcontinent who may have a legitimate claim to use of the term Basmati) should be disregarded and left to opposition. The competing interests of other traders are of direct relevance to the question of whether the Word Mark is capable of distinguishing, both in terms of determining inherent adaptation to distinguish and consideration of any other relevant circumstances.
56. Although I accept that the qualities and characteristics of Basmati rice are attributable to various factors reflected in the Rules (including agro-climatic conditions in the Northern Indian Subcontinent), and that the term Basmati is stringently regulated in India, I am still satisfied that Basmati does not distinguish the Applicant’s certified rice from the rice of others that is not so certified that originates from parts of the Growing Area located outside of India. At most, the evidence demonstrates that Basmati may distinguish, amongst a proportion of the Australian market, particular rice of Indian origin from rice of Indian origin that is not so certified. However, it does not demonstrate that Basmati more broadly distinguishes rice certified by the Applicant from rice not so certified by other traders who have an equally valid claim to use the same term. That group includes, at the very least and by the Applicant’s admission, traders from Pakistan.
57. The Applicant also proposes the following condition of registration (‘Condition’):
It is a condition of registration that all product packaging of products which bear the mark with the approval of the registered owner will also prominently bear the words “Product of India” (or words to that effect).
58. I have considered the Condition, in addition to other possible conditions or limitations that might advance the Applicant’s case. Ultimately, while conditions regarding the use of the Word Mark may serve some purpose to limiting the monopoly sought by the Applicant, they do not serve to render the Word Mark capable of distinguishing the rice certified by the Applicant from other rice that may legitimately be called Basmati by traders outside of India. In order for the Word Mark to truly distinguish the goods of the Applicant, it should not be necessary for consumers to refer to other information on product packaging.
59. For the reasons given above, I am satisfied that there are grounds for rejecting the Word Mark under s 177.
Section 43
60. To establish this ground, the Opponent must show that there is a connotation within the Certification Marks and, because of this connotation, the use of the Certification Marks would be likely to deceive or cause confusion.
61. Section 43 is concerned with a connotation arising from the trade mark itself, not from a likelihood of deception or confusion arising as a result of similarities between a trade mark and another trade mark.[15] The term ‘connotation’ refers to a meaning other than the denotation of the trade mark as an indicator of trade source of the Goods.[16]
[15] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ).
[16] See Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [30] (Greenwood J) and [111] (Katzmann J).
62. The basis for the examiner’s objections under s 43 was that as the Certification Rules indicate that the Goods sold under the Certification Marks can only be grown in certain areas of India, this effectively amounts to a claim for ownership of the word Basmati, and that use of the Certification Marks would therefore be deceptive or confusing given that Basmati rice can properly be grown in other regions (such as Pakistan).
63. I respectfully disagree with the examiner. The term ‘Basmati’ connotes that the Goods are a particular variety of rice. It is not in dispute that such rice originates from certain regions of the Indian subcontinent and has particular qualities. The Goods to which the Certification Marks will be applied clearly fall within this category. The fact that the term Basmati might also legitimately be used to describe rice originating from areas outside of India does not render its use in relation to Indian rice as likely to deceive or cause confusion.
64. I withdraw the ground for rejection raised under s 43 against both of the Applications.
Decision
65. Under reg 16.2, if the Registrar is satisfied that an application has been made in accordance with the Act and there are no grounds for rejection, the Registrar must send to the Commission a copy of the application, notices of any amendments made to the application, a copy of the Certification Rules, and any other document that is relevant to the application.
66. I am satisfied that there are grounds for rejecting the Word Mark under s 177. As such, I reject the application for the Word Mark.
67. I am not satisfied there are grounds for rejecting the Composite Mark. As such, the application for the Composite Mark will be returned to the examiner to send the relevant documents to the Commission in accordance with reg 16.2.
Blake Knowles
Hearing Officer
Delegate of the Registrar of Trade Marks
22 December 2022
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