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Published: Tuesday August 17, 2010 MYT 4:04:00 PM
Updated: Tuesday August 17, 2010 MYT 5:02:43 PM

M’sian firm loses trade mark right to use word “Ponni” for rice variant

KUALA LUMPUR: In the first case of its kind, a Malaysian company lost its bid to retain exclusive rights to use the word “Ponni” for a variant of rice as the company’s trade mark.

The High Court, in its first case of recognition of Geographical Indication (GI) in Malaysian, ruled Tuesday that Syarikat Faiza Sdn Bhd was not entitled to retain the word “Ponni” exclusively when selling rice.

GI means a protection of particular product coming from particular jurisdiction.

Judge Justice Azahar Mohamed said that “Ponni” was a descriptive variety of rice originating from Tamil Nadu and that it was recognisable to consumers in such a manner.

In allowing a civil action by six Indian applicants Tuesday, Justice Azahar concluded that Syarikat Faiza was not entitled to register the word “Ponni” as a trade mark.

“I conclude that the entry of Ponni trade mark in the Register of Trade Marks in Malaysia is an entry wrongly made and wrongfully remaining in the register under Section 45 of the Trademark Act 1976,” he said.

In elaborating, Justice Azahar said “Ponni” was not a word invented by the respondent and that the word was another name for the Kaveri river in Tamil. That rice variant is grown in that river delta.

He said the use of “Ponni” by respondent as trade mark was bound to cause confusion and that consumers would be misled.

Justice Azahar ordered that the “Ponni” trade mark registration by Faiza be expunged and removed from the Malaysian Register of Trade Marks.

The judge also directed the Registrar of Trade Marks to rectify the matter by removing the whole entry relating to the trade mark registration and its removal to be published in the Government Gazette.

Speaking to reporters, the applicants’ lead counsel Karen Abraham, said this was the first case on GI protection with the court recognising a variety of rice from a particular place.

Karen said the ruling was also favourable to Malaysian consumers as they would have more access to “Ponni” rice as it could be distributed more extensively.

The ruling was made in relation to a civil action filed by the Agricultural and Processed Food Products Export Development Authority of India (APEDA), Tamil Nadu Agricultural University (TNAU), Indian farmers and two exporters on Jan 22 this year.

APEDA is an administrative body that is empowered to safeguard and enforce the rights of Indian agriculture on behalf of Indian Government. TNAU was responsible for developing the “Ponni” rice variety in 1971 and is the author of the “Ponni” mark.

The Indian farmers and exporters are all stakeholders in the “Ponni” mark and claimed that the exclusive rights over the usage of word as a trade mark granted to the respondent would affect their ability to trade in “Ponni” rice.

In the court documents, six applicants claimed that “Ponni” rice was named after and in tribute to the Kaveri Delta region in India.

They claimed that trade mark for “Ponni” was wrongly entered in the Malaysian Trade Marks Register under the name of the Faiza as the respondent was neither the proprietor of “Ponni” as a trade mark, nor the author of the name.

In the March 15 affidavit, Faiza’s sales and marketing manager Fazaruddin Ibrahim said the company was the valid holder and registered owner of “Ponni” trademark and handled their rice business in the name and style of “Beras Taj Mahal” and/or “Beras Faiza Herba Ponni”.

On June 6, 2000, Faiza filed an application for the registration of the name “Ponni” as a trade mark in relation to “rice”.

The trademark was subsequently advertised in the Government Gazette on Oct 27, 2005 and was entered in the Trade Mark Registers on Jan 20, 2006.

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