Agricultural and Processed Food Products Export Development Authority v Commissioner of Trade Marks

[2025] NZHC 3264

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE

CIV-2024-485-430 [2025] NZHC 3264

UNDER  the Trade Marks Act 2002

BETWEENAgricultural and Processed Food Products Export Development Authority

Appellant

ANDThe Commissioner of Trade Marks Respondent

Hearing:                   24 February 2025, further submissions received 28 March 2025

and 28 April 2025

Appearances:           J G Miles KC, T A Huthwaite and S M Stern for Appellant G C Williams KC and A W M Britton for Respondent

Judgment:                30 October 2025

JUDGMENT OF BOLDT J

Introduction

[1]    Basmati rice is a premium long grain rice which is grown in Pakistan and northern India. It has a number of appealing qualities. Among other things, it has a distinct aroma, a sweet taste, a delicate and fluffy texture and slender grains which elongate when cooked. Its special qualities arise, in substantial part, from the rich soil and unique climate of the Basmati Growing Area (BGA), a region spanning parts of India and Pakistan where the Himalayan foothills meet the Indo-Gangetic Plain.

[2]    Basmati rice has been grown in the BGA for centuries. The word “basmati” has its origins in the Sanskrit word “vas” meaning aroma, and “mati”, meaning ingrained from origin. It is a hugely popular rice variety and a staple of South Asian cuisine. It is sold to retailers and restaurants throughout New Zealand. Between

APEDA v The Commissioner of Trade Marks [2025] NZHC 3264 [30 October 2025]

4,000 and 6,500 tonnes of basmati rice were exported from India to New Zealand each year from 2014 to 2020.

[3]    This appeal is brought by the Agricultural and Processed Food Products Export Development Authority (APEDA), which is part of the Indian Government’s Ministry of Commerce and Industry. APEDA is a statutory authority which has represented the interests of Indian basmati rice producers and other industry stakeholders since 1995. Among other things, it administers the strict regulatory framework which governs Indian growers and facilitates and promotes the export of basmati rice.

[4]    In February 2019 APEDA applied under the Trade Marks Act 2002 (the Act) to register a certification trade mark (certification mark) over the word mark BASMATI in class 30 for “rice”. In February 2024, the Assistant Commissioner for Trademarks held that s 18 of the Act prevented registration of the BASMATI word mark.1 APEDA appeals against that decision.

Certification marks

[5]    While a standard trade mark is used to distinguish the goods or services of one trader from those of another, a certification mark is used to indicate that goods or services meet certain standards or possess certain characteristics.2 Common examples include the Heart Foundation’s “tick” mark, which can be attached to food which meets certain nutritional standards, the “Made in New Zealand” symbol and the Woolmark, which certifies that wool products meet defined standards of quality, performance and durability. The owner of the mark is entitled to bring infringement proceedings if anyone uses the mark without authorisation.3

[6]The relevant part of the s 5 definition provides:

certification trade mark means a sign capable of—

(a)being represented graphically; and

1      Re Agricultural and Processed Food Products Export Development Authority [2024] NZIPOTM 26 [Decision under appeal] at [3].

2      Re Manuka Honey Appellation Society Inc [2018] NZIPOTM 7 at [55]. Consorzio per la Tutela del Formaggio Gorgonzola v Dairy Companies Association of New Zealand Incorporated [2022] NZIPOTM 13 [Consorzio v Dairy Companies] at [22]. Trade Marks Act 2002, s 5(1).

3      Section 89(1).

(b)distinguishing, in the course of trade,—

(i)goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristic from goods not so certified;

[7]    The owner of a certification mark may not itself be a user of the mark — a certifying person (or body, like APEDA) may own a certification mark, but a person who “carries on trade in” the relevant goods or services may not.4

[8]    While certification marks and standard trade marks perform different functions, the law which governs them is the same in many respects. Section 18 of the Act prohibits the registration of a trade mark, including a certification mark, which has no distinctive character, or which merely describes the goods or services to which it relates. To paraphrase ss 5 and 18, for its mark to be registered, APEDA must show that the word BASMATI is capable of distinguishing rice it has certified from rice that is not so certified, and that it does not simply describe a variety of rice.5

Geographic indicators

[9]    BASMATI is registered as a geographic indicator (GI) in India, meaning only Indian basmati rice may be described as “basmati” in that country. A GI signals that a product comes from a particular geographic area; GIs depend on the product having a particular quality or reputation which is attributable to that location.6

[10]   APEDA does not contend BASMATI is registrable as a GI in New Zealand, nor does it submit that the word basmati is inherently associated with Indian rice. Rather, it argues that the right to use the mark BASMATI should be restricted to producers whose rice has been approved by APEDA.

4      Section 14.

5      Consorzio v Dairy Companies, above n 2, at [185].

6      Consorzio v Dairy Companies, above n 2, at [24]. For example, the “PARMIGIANO REGGIANO” GI is used to certify that particular cheeses are an authentic product originating in the (strictly defined) Parma-Reggio region of Italy. Champagne is another example; if sparkling wine does not originate in the Champagne region of France, it may not be lawfully be labelled as champagne.

Non-distinctiveness under s 18

[11]   The present application turned, in large part, on s 18 of the Act. It relevantly provides:

18       Non-distinctive trade mark not registrable

(1)The Commissioner must not register—

…

(b)a trade mark that has no distinctive character:

(c)a trade mark that consists only of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services:

…

(2)The Commissioner must not refuse to register a trade mark under subsection (1)(b), (c), or (d) if, before the date of application for registration, as a result of either the use made of it or of any other circumstances, the trade mark has acquired a distinctive character.

[12]   Much of the argument focussed on ss 18(1)(b) and 18(1)(c), which prohibit the registration of non-distinctive and purely descriptive marks respectively. Together they require a mark to be capable of distinguishing certified goods from non-certified goods, and to do more than merely describe the product in question.

[13]   APEDA submits that the word BASMATI has acquired a distinctive character in New Zealand and that most people surveyed in this country associate basmati rice with India. It contends that environmental factors in the BGA, along with APEDA’s quality assurance regime, make Indian basmati rice unique and accordingly that a certification mark is appropriate.

Regulations

[14]   Section 54 of the Act provides that before the Commissioner decides whether to register a certification mark, the applicant must provide a set of draft regulations for approval. If approved, they govern the way the mark operates. Among other things,

the proposed regulations must contain provisions that indicate when the owner will certify the goods or services, and when it will authorise use of the mark.7

[15]   APEDA duly submitted proposed regulations for the BASMATI mark. They provide that the mark will be applied to “only such rice which meets the criteria for Basmati Rice as defined in these Regulations and which meet the standards laid down by [APEDA] in this behalf.” 8 The proposed regulations define basmati rice as:9

… rice that:

(i)is cultivated, grown or produced in the States of Punjab, Haryana, Delhi, Himachal Pradesh, Uttarakhand, and parts of Uttar Pradesh and Jammu & Kashmir in the Republic of India as shown in the map in Annexure 1; and

(ii)has the morphological properties listed in the office memorandum of the Indian Ministry of Agriculture dated May 29, 2008 reproduced in Annexure 2;

[16]   On its face, approval of the mark would preclude producers whose rice is not approved by APEDA from using the word basmati. It would entirely exclude Pakistani producers, who would infringe APEDA’s mark whenever they use “basmati” to describe their rice, though APEDA insists it does not propose to enforce the mark in that way.

[17]   Nonetheless, and as is discussed in more detail below, one of the critical issues in this case is whether registration would unfairly prevent rice grown in the Pakistani part of the BGA from being labelled and sold as basmati rice in New Zealand. APEDA submitted the interests of Pakistani producers can be accommodated within the regime it proposes.

7      Trade Marks Act, s 55(2).

8      Proposed Regulations for the use of the Certification Mark “BASMATI”, cl 4.1..

9      Clause 2(d). Emphasis added.

APEDA’s applications

[18]   In February 2019, APEDA applied to register BASMATI as a certification mark in numerous jurisdictions, including Australia and New Zealand. APEDA says registration is necessary to protect consumers. Registration would ensure, among other things, that consumers can have confidence that rice marketed as basmati is genuinely grown in the BGA and meets APEDA’s exacting standards.

[19]   In December 2022, a Delegate of Australia’s Registrar of Trade Marks declined APEDA’s Australian application.10 The Delegate ruled that the word BASMATI is incapable of distinguishing rice certified by APEDA from genuine basmati rice produced outside India.11 APEDA has appealed that decision to the Federal Court of Australia. At time of writing this judgment, the Federal Court’s decision remains reserved.

[20]   In New Zealand, the Assistant Commissioner of Trade Marks, Ms Aldred KC, declined to register the BASMATI mark for reasons similar to those advanced by the Registrar’s Delegate in Australia.12 APEDA appeals against the Assistant Commissioner’s decision.

Procedural history

[21]   After receiving the application in early 2019, the Intellectual Property Office of New Zealand (IPONZ) issued a series of “compliance reports” which expressed concern about whether BASMATI could meet the requirements of a certification mark. Its first compliance report, issued in March 2019, noted that a mark must be both distinctive and non-descriptive. IPONZ raised concerns about BASMATI on both bases. It indicated a preliminary view that the proposed mark merely describes aromatic long-grain rice produced in the BGA and that it is incapable of distinguishing “approved” basmati rice from other basmati rice which falls outside APEDA’s jurisdiction.

10     Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India [2022] ATMO 228 [Australian decision] at [66]

11 At [58].

12     Decision under appeal, above n 1, at [30].

[22]   A lengthy course of correspondence followed. In July 2020, APEDA’s advisers submitted that the word basmati is distinctive. Moreover, it submitted basmati rice is different from other rice, and that most New Zealand consumers associate it with the BGA. IPONZ responded that December. It observed:

The current application relates to a certification mark for the term Basmati in relation to rice, the scope of certification appears to only extend to rice that is grown in the Indian portion of the Basmati Growing Area.

The mark BASMATI has no other distinguishing features, it is merely the name of a well-known variety of rice grown predominantly in India and Pakistan. It is incapable of distinguishing Basmati rice that originates from the area the certification mark relates from Basmati rice grown outside of … that area but that is equally able to be called Basmati and holds all the qualities of Basmati rice.

We note the submissions refer to the history of the name Basmati and its use to denote rice from the Basmati Growing Area. As the Basmati Growing Area includes areas outside the scope of the certification mark, it merely points further to the marks inability to be able to distinguish the goods certified from those not able to be certified.

[23]   In October 2021, APEDA’s advisers indicated that it proposed to address IPONZ’s concerns in the following way:

The Applicant acknowledges that genuine Basmati rice can also be grown within the Basmati Growing Area in Pakistan (as Basmati is a transnational geographical indication which extends across the Basmati Growing Area in both India and Pakistan), which rice is regulated by the relevant governmental body in Pakistan. The Applicant’s application to register the Basmati Mark only relates to Basmati rice grown within the Indian part of the Basmati Growing Area, as the Applicant is fully aware that it is only rice grown within the Indian part of the Basmati Growing Area that can be certified by the Applicant.

In order to address the Examiner’s concerns regarding the scope of the Basmati Growing Area to which the Basmati Mark applies, according to the Applicant’s proposed certification trade mark rules for trade mark application no. 1114694, the Applicant proposes to amend the said certification trade mark rules in the following ways.

(a)amend the definition of Indo-Gangetic Plains contained in the certification rules in order to expand the relevant area specifically to include Pakistan, albeit making it clear that the area from which the rice that can be certified by APEDA is only the Indian area; and

(b)amend other aspects of the Certification Rules to make it clear that the Applicant can only certify Basmati rice that emanates from India.

In addition, the Applicant will not oppose the registration of any legitimate certification trade mark application that is filed by the relevant Pakistani body in respect of Basmati rice grown in the Pakistan part of the Basmati Growing Area and the Applicant would be willing to provide an undertaking to this effect.

[24]   IPONZ was unmoved. In March 2022, it issued a further compliance report, which included the following passages:

Even if the applicant’s findings showed that it is the New Zealand public’s perception that basmati is a specific type of rice that can come only from a specific place, namely the BGA, this does not support the claim that the current certification trade mark should be registrable.

The relevant consideration in this case is not whether the relevant consumers would only see the mark BASMATI as designating rice originating from the whole of the BGA. The applicant does not certify all basmati from the BGA, but specifically basmati from the Indian portion of the BGA. Therefore, the relevant consideration is whether the mark BASMATI is capable of distinguishing between the certified kind of basmati from the certified region (being the Indian portion of the BGA) against the kind which are not so certified and therefore are not from the Indian portion of the BGA.

The evidence and research set out in the statutory declarations suggest that basmati rice currently sold in New Zealand is produced from either India or Pakistan, however it does not support the claim that consumers will be able to distinguish between basmati certified from the Indian portion of the BGA and basmati grown outside of this area.

…

Accordingly, we maintain that BASMATI is merely descriptive of a kind of rice, and therefore is not capable of distinguishing the goods certified by the applicant from goods not so certified. Basmati rice can [be] and is grown in areas outside of the certified region and would not be distinguished by consumers as being any different to the rice intended to be covered by this mark.

We consider that the additional evidence provided is not sufficient to convince us otherwise. In our view, allowing this certification trade mark would have the effect of preventing the use of the term by traders outside of the certified region who may legitimately want to use the descriptive term.

Therefore, our objections under sections 18(1)(c) and (b) of the Act are maintained.

[25]   In November 2022 IPONZ issued a formal notice of its intention to reject APEDA’s application. APEDA requested a hearing before the Commissioner before the IPONZ’s notice of intention became final.

[26]   The hearing took place in February 2024. The Assistant Commissioner agreed with IPONZ that APEDA’s application did not satisfy the requirements of ss 18(1)(b) and (c) of the Act and was not saved by s 18(2).13 Accordingly, APEDA’s application was rejected.

[27]   Like IPONZ, the Assistant Commissioner’s central conclusion was that the word BASMATI describes a type of rice that comes from a region which spans India and Pakistan.14 While basmati rice is different from other types of rice, there is no material difference between Indian and Pakistani basmati rice. The Assistant Commissioner held:

[33] In any event, the fact that — on the applicant’s own evidence — BASMATI can describe rice grown in Pakistan that is not certified by the applicant means that the proposed mark simply would not perform the function required under the s 5 definition, namely, of distinguishing the goods sold under that mark from goods not so certified.

…

[35]      Accordingly, on the basis of the applicant’s own evidence and submissions, to the extent that the BASMATI mark has acquired distinctive character through use in New Zealand, it has done so as signifying rice of the basmati kind that has grown in India and Pakistan, and not rice confined to those producers whose products are certified by APEDA.

[36]      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 relevancy to final authorities of both countries.

The appeal

[28]   Section 170 of the Act gives anyone who is aggrieved by a decision of the Commissioner a right of appeal to this Court. The parties agree that while APEDA must demonstrate a material error in the Assistant Commissioner’s decision, I should

13 At [2].

14 At [29].

consider the question of registration afresh, assigning such weight as I consider appropriate to the Assistant Commissioner’s analysis.15

[29]   Mr Miles KC, on behalf of APEDA, submitted the unique nature of basmati rice, combined with the quality and consistency guaranteed by APEDA, means the Assistant Commissioner was wrong when she concluded the mark is insufficiently distinctive.

[30]   Mr Miles noted that basmati rice has, for hundreds of years, been recognised as a distinct and desirable type of rice. It is, he submitted, easily capable of being distinguished from non-basmati rice. He submitted its premium status and its good reputation among New Zealand consumers makes it the kind of product a certification mark is designed to protect.

[31]   APEDA tendered evidence that, according to a consumer survey it had commissioned, most respondents (just over 50 per cent) associated the word basmati with rice grown in the BGA, which covers both India and Pakistan. Mr Miles submitted that that level of recognition means the word basmati has acquired distinctive character. He acknowledged that “rice called basmati” is produced in Pakistan, but noted APEDA had tendered evidence showing how the Indian authorities ensure basmati rice grown on the Indian side of the border always meets exacting standards of quality and authenticity. He declined to concede that basmati rice grown in Pakistan is identical in all material respects to Indian basmati rice. At the same time, he acknowledged he could not point to any basis on which Indian and Pakistani basmati rice can be distinguished.

[32]   Mr Williams KC, on behalf of the respondent, agreed basmati rice is a premium product with unique characteristics that distinguish it from other types of rice. But APEDA’s own evidence shows basmati rice is, and is understood by consumers to be, a type of rice which is grown in the BGA, much of which is outside APEDA’s jurisdiction. Mr Williams submitted, in light of that, that the mark cannot fulfil the most basic requirement of a certification mark, as it is incapable of distinguishing certified goods from goods which are “not so certified”.

15     High Court Rules 2016, r 20.18.

[33]   Mr Miles acknowledged that if the mark were registered and no conditions were imposed to protect the position of Pakistani traders, APEDA would be entitled to bring infringement proceedings whenever the word basmati is attached to Pakistani rice. Mr Williams submitted that “granting the mark to India alone would unfairly strip [Pakistani] producers of the use of the common name of their product used in the New Zealand market.” While he acknowledged that APEDA would have a stronger argument if the BGA fell entirely inside India’s borders, he submitted the transnational nature of the mark and the fact Pakistani rice falls outside APEDA’s jurisdiction is fatal to APEDA’s case.

[34]   Mr Miles argued that APEDA has no intention of enforcing its mark in a way which prevents Pakistani producers from using the word basmati to describe their rice. He criticised the fact that neither IPONZ nor the Assistant Commissioner dealt in detail with the undertakings APEDA had proposed to protect the position of Pakistani growers and exporters.

[35]   As noted above, APEDA undertook, if necessary, to amend the regulations governing the mark. It promised to extend the geographic definition of the BGA — the Indo-Gangetic Plains — to include basmati growing regions on the Pakistani side of the border and to make it clear APEDA could only certify basmati rice grown in India. It also undertook not to oppose “the registration of any legitimate certification trade mark application that is filed by the relevant Pakistani body in respect of Basmati rice grown in … Pakistan”.

[36]   Mr Miles drew my attention to proposed reg 5.7, which will require any packaging which carries the mark to include the statement “BASMATI is a certification mark of the Agricultural and Processed Food Products Export Development Authority, India”.

Trade-Related Aspects of Intellectual Property Rights

[37]   Mr Miles also relied on New Zealand’s obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), a World Trade Organisation agreement to which New Zealand is a party. Article 22 of TRIPS obliges signatories to “provide the legal means for interested parties to prevent” the misuse of

GIs. Mr Miles submitted that registration of the BASMATI mark is the only practical mechanism open in this country to protect the GI that exists in Indian domestic law.

[38]   Mr Williams submitted the TRIPS agreement adds nothing to APEDA’s case. He noted that TRIPS mandates only that members prevent the misleading use of geographic indicators. Section 13(j) of the Fair Trading Act 1986 and the tort of passing off already prevent traders from misleading New Zealand consumers about the geographical origin of their products.

[39]   Before turning to APEDA’s submissions on distinctiveness and descriptiveness under s 18, I record that I do not consider the TRIPS agreement assists APEDA. The relevant articles oblige members to ensure the public is not misled about the true place of origin of goods offered for sale. I agree New Zealand law already provides consumers with ample protection from false representations about a product’s place of origin. TRIPS does not oblige members to recognise and enforce GIs which are registered in other countries but cannot satisfy the relevant requirements under domestic law.16 As already noted, Mr Miles acknowledged APEDA does not suggest BASMATI is capable of registration as a GI in New Zealand. Moreover, it is unclear how registration could protect BASMATI’s status as a GI under Indian law given APEDA’s acknowledgement that it does not intend to prevent Pakistani producers from continuing to use the term.

Distinctiveness

[40]   IPONZ and the Assistant Commissioner rejected APEDA’s application because the proposed mark is incapable of distinguishing rice certified by APEDA from genuine but uncertified basmati rice produced in Pakistan. The proposed mark was rejected in Australia on the same basis.

16 The position may be different where express provision is made for mutual recognition of geographic indicators under a free trade agreement, but there is, at present at least, no such agreement between New Zealand and India.

[41]   Mr Miles acknowledged the widely accepted test for distinctiveness, which dates back to the House of Lords’ decision in Registrar of Trade Marks v W & G du Cros Ltd. Lord Parker observed:17

The applicant for registration in effect says, “I intend to use this mark as a trade mark, ie, for the purpose of distinguishing my goods from the goods of other persons,” and the Registrar or the Court has to determine before the mark be admitted to registration whether it is of such a kind that the applicant, quite apart from the effects of registration, is likely or unlikely to attain the object he has in view. The applicant’s chance of success in this respect must, I think, largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.

[42]   The du Cros test has been applied on numerous occasions by New Zealand courts,18 albeit never before in the context of a certification mark. In AA Insurance v AMI Insurance, Williams J summarised it as follows:19

[22]The du Cros test asks:

(a)whether the trade mark, on its face, can achieve the goal of distinguishing that traders product from competitors’ products; and

(b)as an important guide, with other traders are likely, in good faith, to want to use the same or a similar mark in relation to their own products.

[43]   While the test necessarily requires an element of modification when applied in the context of a certification mark, both aspects of du Cros are engaged in this case. Because Pakistani producers use the term basmati in good faith as an accurate description of their own product, it is impossible for the word BASMATI to distinguish Indian rice, certified by APEDA, from Pakistani rice which has not been so certified.

[44]   There is no doubt additional labelling could distinguish Indian and Pakistani rice. But the possibility of additional labelling, like the undertakings offered by APEDA, misses the point. Unless a different test is applicable where an applicant seeks a certification mark, it is the mark itself which must be capable of distinguishing

17     Registrar of Trade Marks v W & G du Cros Ltd [1913] AC 624 (HL) at 634–635.

18     Intellectual Reserve Inc v Sintes [2009] NZCA 305, [2014] NZAR 556. Registrar of Trade Marks v W & G du Cros Ltd [1913] AC 624. Cadbury Ltd v Effem Foods Ltd [2007] NZCA 303.

19     AA Insurance Ltd v AMI Insurance Ltd [2012] 1 NZLR 837. Emphasis in original.

certified from uncertified goods. The mark must be distinctive on its face; it cannot rely on accompanying information which might make the position clearer. In Australia, the Registrar’s Delegate observed:20

[58] … 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.

[45]   While Mr Miles acknowledged that du Cros is settled law, he submitted the analysis should be more nuanced in the case of a certification mark. Unlike a standard trade mark, which must plainly be distinctive on its face, certification marks are accompanied by bespoke regulations which govern their use. The regulations could, he submitted, ensure the mark is always used in a way which distinguishes certified from uncertified rice. Indeed, as is discussed in more detail below, he asked for an opportunity to refine APEDA’s proposed regulations to reduce or eliminate the risk of the mark being enforced in a way which unfairly prevents legitimate (but non APEDA-certified) traders from using the word basmati to describe their rice.

Mānuka honey

[46]   Conditions and undertakings aside, the present case is on all fours with the way the respective trade mark authorities in New Zealand, the United Kingdom and the European Union responded to applications by New Zealand’s Mānuka Honey Appellation Society (MHAS) for registration of MANUKA HONEY as a certification mark.21 Mānuka honey is a premium type of honey which commands materially higher prices than most other varieties. Like basmati rice, its qualities can be objectively defined. Like basmati rice, it is produced in more than one country. As in the present case, the certifying body in one country — New Zealand — argued the

20     Australian decision, above n 10.

21 Australian Manuka Honey Association Ltd v Manuka Honey Appellation  Society  UKIPO  O/899/21 (13 December 2021). Manuka Honey Appellation Society Incorporated EUIPO (30 April 2019). Manuka Honey Appellation Society Incorporated v Howes (2021) 166 IPR 189, [2021] ATMO 64 (7 July 2021).

mark is sufficiently distinctive that it should be able to register the phrase as a certification mark.22

[47]   The Assistant Commissioner, like the United Kingdom Intellectual Property Office and the Fifth Board of Appeal of the European Union Intellectual Property Office, concluded the proposed mark is merely descriptive of a type of honey.23 It is not, on its own, capable of distinguishing New Zealand mānuka honey from uncertified, but equally genuine, honey produced in Australia. All three bodies rejected MHAS’s application to  register  the  term  as  a  certification  mark.  In  New Zealand, the Assistant Commissioner observed:24

[543] MHAS essentially claims that Australian honey producers have jumped on the bandwagon that New Zealand producers have created for mānuka honey. … On the evidence before me it is clear that Australia’s manuka honey industry developed much later than the New Zealand mānuka honey industry. However, that does not mean a New Zealand Association, such as MHAS, should be able to monopolise use of a wholly descriptive term.

[48]   Mr Miles argued the mānuka decisions are distinguishable, contending that while mānuka honey plainly refers only to a type of honey, basmati implies an association with a clearly-defined geographic  area.  In  addition,  he  noted  the  New Zealand authorities had proposed no mitigatory measures which might address the position of Australian producers, who would simply have had to call their honey something else.

Refinements to the regulations

[49]   I accept that basmati rice is distinctive and is properly regarded as a premium type of long grain rice. Legitimate producers would have every right to feel aggrieved if non-basmati rice were misleadingly labelled as basmati.25 Nonetheless, the transnational nature of basmati production remains a stumbling block for APEDA.

22     Manuka Honey Appellation Society Inc v Australian Manuka Honey Association Ltd [2023] NZIPOTM 19 at [2].

23     At [102]–[103].

24     In New Zealand mānuka honey is spelt with a macron. Australian producers do not use a macron, hence the inconsistent spellings in the Assistant Commissioner’s decision.

25     That said, the evidence did not indicate that attempts to pass non-basmati rice off as basmati has ever been a significant problem.

[50]   Mr Miles acknowledged that a mark which leaves Pakistani producers vulnerable to enforcement action for accurately describing their product as basmati rice is unappealing. Nonetheless, he suggested the fact that the BGA spans two jurisdictions should not present an insurmountable obstacle to registration. In light of the way the argument unfolded, and my scepticism about the undertakings it had offered to that point, he sought a period for reflection which would provide APEDA with the opportunity to amend its regulations further.

[51]   Mr Williams opposed that course, noting that special leave is required to introduce new material on appeal.26 He also submitted it will be impossible for APEDA to change the regulatory regime in a way which addresses the respondent’s concerns. The proposed mark is the word BASMATI. No amount of tinkering with the regulations will enable that mark to distinguish basmati rice grown on one side of the border from identical rice grown on the other.

[52]   I concluded it would be in the interests of justice to give APEDA the opportunity to suggest amendments to its proposed regulations, if only to ensure all available options are fully explored. Mr Miles expressed confidence that he and his advisers could craft a solution which would accommodate the interests of both APEDA and Pakistani producers. I gave APEDA special leave to propose further conditions and/or regulations which would appropriately limit the BASMATI mark to ensure the interests of Pakistani producers were protected. I invited it to explain how the proposed limitation would function in light of the requirements of a valid certification mark and how it proposes to distinguish certified rice from genuine basmati rice which falls outside its jurisdiction.

[53]   The final regime, as proposed by APEDA in its supplementary submissions, confirmed the impossibility of the task. Indeed, those submissions did not advance its position far beyond the one it articulated in argument. APEDA noted that its application already proposes, as a condition of registration, that the mark will “always be used in close conjunction with a clear indication that it is a certification mark”.

26     Trade Marks Act, s 172(2).

[54]   APEDA proposed two further safeguards. The first is a further condition of registration.27 APEDA proposed a condition that:

Registration of this certification trade mark does not entitle the owner to prevent the legitimate use of the name Basmati to denote rice originating from Pakistan.

[55]   Finally, APEDA proposed an additional regulation, making good its promise to ensure, in any packaging using its BASMATI mark, that the packaging “will also prominently bear the words ‘Product of India’ or ‘Produce of India’ (or words to that effect).” Mr Miles submitted the proposed changes are a principled and pragmatic way of defining the scope of the mark while fairly addressing the position of Pakistani producers.

[56]   I agree APEDA’s proposals are pragmatic and may go some way towards addressing the position of Pakistani producers. But the changes APEDA proposes do not resolve the contradiction at the heart of its application. The only reliable way of distinguishing certified from uncertified rice would be to prohibit Pakistani producers from labelling their rice as basmati, an outcome that would be impermissible and which has never been APEDA’s objective. The alternative APEDA proposes would render BASMATI ineffective a certification mark. The new condition APEDA proposes effectively confirms that certified rice from India and uncertified basmati rice from Pakistan would both use the mark, and would sit side by side on supermarket shelves.

[57]   Mr Miles submitted the extra labelling APEDA proposes will ensure the mark still fulfils the function of a certification mark. I do not agree. Most consumers do not know what a certification mark is, or what it signifies. Rather, its value comes from the instant association it produces in the consumer’s mind. A consumer who sees the word basmati should not be required to look for additional labelling to understand whether it simply means a type of rice (in the case of rice originating in

27 Section 40 of the Act permits the Commissioner (and on appeal the Court) to approve an  application “subject to any conditions the Commissioner thinks fit” and s 11 provides that the rights of the owner of a registered mark are subject to any applicable conditions entered on the register.  Section 5 provides that a “condition” includes a limitation on the exclusive right to use a mark.

Pakistan) or a type of rice which also meets certain strict quality standards (in the case of rice from India).

[58]   In addition, I agree with Mr Williams that the undertaking not to enforce the mark in a way which would prevent “legitimate” use by Pakistani traders would undercut the utility of the mark. APEDA promises to allow the sale of Pakistani basmati rice which may not meet the same standards it insists upon for Indian producers. In addition to the discretion it would confer upon APEDA to determine whether a Pakistani producer is “legitimate”, consumers would not be able to rely on the word BASMATI to guarantee the quality of the product they are buying, at least without looking for additional information beyond the mark itself. Yet that assurance of quality, and the guarantee of authenticity the mark would represent, is the very object APEDA seeks to achieve with its certification mark.

[59]   It follows that despite the thought that has gone into Mr Miles’ most recent proposal, the proposed mark is remains insufficiently distinctive to allow its registration as a certification mark. If some of the proposed additional labelling were incorporated into the mark itself, the position may be different. But the mark, as it stands, cannot distinguish certified Indian basmati rice from uncertified rice originating in Pakistan. It follows the appeal must fail.

Descriptiveness

[60]   For similar reasons, the second fundamental problem with the BASMATI mark also remains unresolved. Basmati is a well-known type of premium rice, just as mānuka is a well-known type of premium honey. Without modification to the mark, BASMATI merely serves to “designate the kind” of goods in the package. It follows that s 18(1)(c), like s 18(1)(b), continues to present an insurmountable barrier to registration.

Result

[61]The appeal is dismissed.

Costs

[62]   The respondent is entitled to costs. My current inclination is that the respondent is entitled to an award on a 2B basis, with certification for second counsel.

[63]   If the parties require a ruling on the point, the respondent is to file a memorandum of no more than four pages within fifteen working days of the delivery of this judgment. APEDA will then have ten working days to provide a response, also of no more than four pages.

Boldt J

Solicitors:

A J Park, Wellington for Appellant
Crown Prosecutor, Wellington for Respondent