NEW ZEALAND: BASMATI Not Accepted as a Certification Mark

In the New Zealand trademark case of Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India ([2024] NZIPOTM 26), Assistant Commissioner Aldred refused to accept the mark BASMATI for registration as a certification mark.

The applicant submitted a significant volume of correspondence and other documentation. Despite this, the Intellectual Property Office of New Zealand (IPONZ) considered that the mark was a descriptive indication that should be kept free for legitimate use by other traders and issued a formal notice of intention to reject the trademark application.

IPONZ noted that following the 1947 partition of India, the Basmati Growing Area now spans parts of North India and adjacent parts of Pakistan. Traders within the non-Indian parts of the Basmati Growing Area were likely to want to use BASMATI or a similar mark to describe their own rice.

The applicant’s attorneys sought a hearing in relation to the IPONZ decision. Assistant Commissioner Aldred rejected the applicant’s submissions. She agreed that “basmati” is known as a type of rice grown within the Basmati Growing Area, which encompassed both India and Pakistan. The insertion of a reference to the rice products proposed to be labeled with the certification mark “being grown in India” would not save the application as the mark on its face must distinguish certified products from non-certified products. Even on the applicant’s own evidence, the BASMATI mark signified rice of the basmati kind that is grown in both India and Pakistan.

The Assistant Commissioner noted:

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 relevant certifying authorities of both countries.

As the relevant authority from the Government of India made this application on its own and it did not encompass basmati rice grown in the parts of the Basmati Growing Area outside India, IPONZ rejected the application to register BASMATI as a certification mark.

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