Background
India’s Agricultural and Processed Food Products Export Development Authority (APEDA) sought to register BASMATI as a certification trade mark for rice and rice-derived products. APEDA administers a licensing scheme for Basmati rice exported from India, where BASMATI is a registered geographical indication. Basmati rice, however, is grown in an Indo-Gangetic region spanning parts of India and Pakistan.
The Registrar of Trade Marks refused APEDA’s applications for the word BASMATI and a device mark incorporating that word. Following a hearing, the Registrar’s delegate accepted the device mark but maintained the refusal of the word mark under s 177 of the Trade Marks Act 1995 (Cth). APEDA brought a de novo appeal to the Federal Court, requiring the Court to decide the application afresh on its merits.
The Court’s Holding
Justice Dowling dismissed the appeal, holding that BASMATI was not capable of distinguishing rice certified by APEDA from rice not so certified. Its ordinary signification in Australia was a type of rice grown in both India and Pakistan. Because Pakistani Basmati was not certified by APEDA, other traders could legitimately need to use the word, and the mark was not inherently adapted to perform the required distinguishing function under s 177(2)(a).
Nor had BASMATI acquired that capacity through use or other circumstances under s 177(2)(b). Substantial Australian sales of Indian Basmati and survey evidence showing some association with India did not establish that consumers understood BASMATI alone as indicating APEDA certification. Recognition of BASMATI as a transnational geographical indication did not alter that conclusion because APEDA’s proposed certification regime covered India alone. The proposed rules and “Product of India” labelling condition could not make the word itself distinctive, and the Court declined to redraft or impose conditions that would not readily cure the deficiency.
Key Takeaways
- A certification mark must distinguish goods certified by the applicant from goods not so certified; identifying a product type or characteristics is not enough.
- Extensive sales and consumer association with a country do not establish acquired distinctiveness unless the sign is understood to function as an indicator of certification.
- A transnational geographical indication does not automatically satisfy s 177 where the proposed certification scheme covers goods from only one of the relevant countries.
Why It Matters
The decision confirms that geographical indications must satisfy the ordinary statutory requirements governing Australian certification marks. The certification-mark regime does not expand merely because an applicant invokes Australia’s obligations under the TRIPS Agreement.
The ruling also illustrates the difficulty of monopolising a product name shared across national borders. Applicants must show that the mark itself—not accompanying origin labels, certification rules, or consumer awareness of product qualities—distinguishes their certified goods from all uncertified goods.