Marqonsult

The Agricultural and Processed Food Products Export Development Authority of India (APEDA) & Ors v Syarikat Faiza Sdn Bhd [2011] 2 MLJ 768.

PONNI is a term that has become synonymous with a particular variety of rice originating from the Kaveri (also known as Ponni) Delta Region in Southern India. The High Court of Malaysia accepted on evidence that the term had a particular meaning as the name of a rice variant from said region, and consequently expunged a Malaysian company’s registration of PONNI for rice products to protect the freedom of legitimate users with trading interests in PONNI rice.

Although Section 14(1)(f) of the Trade Marks Act 1976 contained provisions against the registration of misleading geographical indications, the High Court in granting the application for expungement, stopped short of defining PONNI as a geographical indication. Instead, the court applied Section 14(1)(a) which barred the registration of any trademark the use of which is likely to result in confusion to the public. This was because the registration of PONNI in the Malaysian company’s name, if not cancelled, would cause confusion if PONNI were used by said company on any rice variant from any country. In such event consumers would be misled by said company into buying rice which is not in fact of the variety from the Southern Indian region.

The court also applied the standards of registrability in holding that PONNI is not an invented word - PONNI having been ascribed a popular meaning as a particular variety of rice even before the filing of the application to register PONNI – and for the same reason, is directly descriptive. Hence, exclusivity in the use of PONNI could not be granted to the Malaysian entity.

The court then ordered the cancellation of the registration under Section 45(1) as it was an entry wrongfully made and wrongfully remaining in the Register.

The decision is significant in that it shows the continued relevance of the traditional concept of confusion to the protection of geographical indications. This is in addition to the protection afforded by specific legislation such as the Geographical Indications (GI) Act 2000 (which prohibits the use of geographical indications in a misleading manner or which constitutes an act of unfair competition pursuant to Article 10bis of the Paris Convention), and Section 14(1)(f) of the Trade Marks Act which prohibits the registration of misleading geographical indications as a trademark. It is noteworthy that an action against any use in good faith of a geographical indication, even if it contravenes the GI Act, may be time-barred in certain circumstances. As well, “good faith” registration or use of a geographical indication, even if misleading, is a defense to any attack (whether by way of pre-grant objection, opposition or application for expungement) under the Trade Marks Act if for example, said registration or use occurred prior to the commencement of the GI Act.

That an additional avenue is available to protect geographical indications is of particular importance given the possible defenses under the GI Act and the Trade Marks Act.

ABOUT THE AUTHOR:

Clara Yip

Founding Director, MarQonsultIP, Malaysia
B.A. (Econs.) / LL.B., University of Auckland (1992)
*Barrister & Solicitor, High Court of New Zealand (1993)
*Advocate & Solicitor, High Court of Malaya (1994)
*non-practicing
Registered Patent, Trademark & Design Agent, Malaysia
2006-2010 Asialaw Leading Lawyer (Intellectual Property)
2011 Finance Monthly Law Award Winner (Intellectual Property - Malaysia)
2011 Global Law Expert (Recommended IP Law Expert - Malaysia)