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India – Geographical Indication or Certification Mark To Overcome Wrongly Registered Trademark – Ponni

In April 2008, the Government of India banned the export of non-basmati rice (all forms of rice grains that are not the variety of long grain rice). The export ban also covered polished rice usually consumed by diabetic patients to control their intake of sugar in their meals. Such a decision effectively was a severe blow on the business and trade of premium rice exporters as well as global rice importers around the world from South India. Exporters of the rice variety lost as much as 35,000 tonnes of rice export orders.

The non-basmati premium variety rice largely known as Ponni, exported mostly from South India to expatriate population globally, is now in immense danger of losing its overseas markets.

It must be remembered that rice is a staple for most of East, South and Southeast Asia, making it the second-most consumed cereal grain worldwide with the Ponni rice variety being primarily exported to Singapore, Hong Kong, Japan and Malaysia. Any impediment in supply may monumentally affect the commercial value of rice to end consumers in Asia.

Particularly in Malaysia, as a compounding factor to the rice import and export restriction, a local retail firm trading in commodities and end consumer goods, namely Syarikat Faiza Sdn. Bhd. had unilaterally proceeded to register the derivation “PONNI” in year 2000 as a trade mark under the Malaysian Trademark Act and now threatens to commence legal action on any or all importers of such Ponni rice variety into Malaysia, closing the doors on rice imports for consumption by consumers.

Based on their subsisting trade marks, namely Trade Mark Registration No. 00007172 for the PONNI Stylised mark and Trade Mark Application No. 00007171 for the derivation FAIZA HERBAL PONNI, the Malaysian entity claims that it has exclusive rights to trade in the Ponni variety rice in Malaysia, causing obstruction to all other rice importers and traders to supply the market with rice for consumption by Malaysians.

The entity imports rice grains particularly herbal quality rice from India, later renaming them as Herbal Ponni rice and trades them under their house brand Taj Mahal. The entity claims that in Malaysia, the Ponni rice variety is synonymous with healthy diet as they contain less carbohydrates and are suitable for consumption by those who suffer from diabetes or blood pressure condition.

Importing counterparts of the ‘Ponni’ rice variety in Malaysia have highlighted to their Indian suppliers of the Ponni rice that as the “Ponni” trade mark is registered locally by Syarikat Faiza, importers are now being ceased and prohibited from further trading or retailing similar-named rice imported from India or sourcing them from any other traders worldwide.

Suppliers of the Ponni rice are concerned that free trade of the rice variety from South India will be deprived against the commercial interests of the Malaysian trading company if the commodity retailer is allowed to sustain its rights over the South Indian rice variety. The Indian Government have been urged to oppose onward registration of such derivations as trade marks as such award of rights curtails and severely prohibits free trade of essential goods for consumption altogether.

Rice importers in Malaysia are subject to serious crisis resulting in deprivation of free trade of imported grains coupled with the Indian Government’s export ban on non-basmati rice variety. Various Indian rice exporters are concerned that adoption of the Ponni rice variety as a trade mark in Malaysia by one entity for their own will severely affect the commercial potential for export and import of necessary rice supply as well as trade of essential goods that may cause a shortage effect in consumer markets that essentially require consistent supply for consumption.

Ultimately, the domino effect of course, for lack of supply to global markets by way of export from India, will be the losses to the livelihood and financial security of rice growers that would perpetuate into surplus of rice inventories and consequentially slump the rice industry in India.

To prevent and overcome such predicament in global export and import trade of essential goods, Indian authorities may have to consider commencing registration of the Ponni as an indica of originating Indian rice variety though a certification trade mark process or should there be substantial legitimate interest, even as geographical indication. An outline of the Ponni rice variety standards and relevant regulations for export of such variety may be additional to face any onslaught on India’s originating produce from being challenged globally.

As the wider industry sees to the Indian government to act on the Ponni rice variety issue, perhaps a similar approach of ensuring geographical indication rights for the variety may be applicable to the circumstances surrounding acquisition of the current Ponni trade mark sought for registration in individual jurisdictions where the rice variety is being imported for sale.