Syarikat Faiza SDN.BDH (SFSB), the Malaysian retail giant trading in commodities, according to news reports, has recently secured the trademark rights for ‘PONNI’ under Clause 30 of the Malaysian Trademark Act under the general class of food. The action of securing the trademark right has significance as Ponni is non-basmati premium variety rice mostly exported from South India. The South Indian suppliers of this rice are now in jeopardy as they have been told by the rice importing firms that in the current situation they are proscribed from selling similar-named imported rice from India or from other sources

SFSB christened this herbal quality rice from Karnataka and Tamil Nadu as the Herbal Ponni rice and sold it under the brand name Taj Mahal, Ponni. The company claims that in Malaysia this rice has become synonymous with health because it contains less carbohydrates and starch and is acceptable to people with diabetics or high blood pressure.

This is not an unusual state of affairs as in the past the Union Government has taken cudgel to oppose the registration of the word ‘basmati’ as a trademark in US and France. Basmati is a unique name to describe rice grown from the Indo-Gangetic plain. It is felt among the stakeholders that any failure to safeguard the interests of the Ponni brand name by India would entail a loss of Rs 400 crore in global market for this genre of rice. Ponni is exported to Singapore, Hong Kong, UAE, Saudi Arabia, US, Canada, Japan, UK, Germany, France, Australia, New Zealand, and South Africa, besides Malaysia.

The potential threats from commercial interests transcending borders are something which any nation needs to put at rest. In this particular case a certification trademark or more appropriately a Geographical Indication can be the best possible approach.

The Geographical Indications of Good (Registration and Protection) Act 1999 is a sui generis legislation in India for better protection of geographical indications as defined in Article 22.1 of TRIPS Agreement.

Salient features of the law are as follows:

1. “Geographical Indications” in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of proceeding or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.



2. "Goods” means any agricultural, natural or manufactured goods or any goods of handicraft or of industry and includes food stuff.



3. “Producer”in relation to goods, means any person who –

• if such goods are agricultural goods, produces the goods and includes the person who processes or packages such goods;
• if such goods are natural goods, exploits the goods;
• if such goods are handicraft or industrial goods, makes or manufacturers the goods.


and includes any person who trades or deals in such production, exploitation, making or manufacturing, as the case may be, of the goods.

4. Relative Grounds of Refusal – It is not permissible to register a geographical indication:

• The use of which is likely to deceive or cause confusion;
• The use of which is contrary to any law in force;
• Which comprises or contains scandalous or obscene matter;
• Which comprises or contains any mater likely to hurt the religious susceptibilities of any class or section of the citizens of India;
• Generic names which are not protected or have ceased to be protected in their country of origin or fallen into disuse in that country;
• Which is a homonymous indication.

5. Enforcement of Rights in a Geographical Indication– A registered GI is infringed when a person:

• uses such geographical indication to indicate or suggest an origin other than the true place or origin which is misleading;
• uses such geographical indication in such manner which constitutes an act of unfair competition including passing-off;
• uses homonymous indications.

6. Absolute Protection for Certain Categories of Goods

• The Government may by notification provide for a additional protection for registered geographical indications;
• Use of a notified geographical indication by a person who is not an authorized user would constitute infringement even if accompanied by expressions such as “kind”, “style”, “imitation” or the like.

7. Exceptions from Infringement
   
   It is permissible to register a trademark containing or consisting of a geographical indication if rights to it have been acquired in good faith through registration or use either:

• before the commencement of the Act; or
• before the date of filing an application for such geographical indication under the Act.

8. Other Features of the Act

• Civil and criminal remedies are available for enforcement of rights in a geographical indication acquired either through registration or use in India;
• In a departure from the general law, a civil action can be filed before a court within whose jurisdiction the plaintiff resides or works for gain or the cause of action has arisen;
• Criminal offence is made a cognizable offence which means an offense in respect of which a Police Officer can search and seize without the intervention of the court;
• All appeals from the orders of the Registrar of Geographical Indications to be heard by an Appellate Board.

Under the purview of this Act, which came into force on September 15, 2003, the central government has established the Geographical Indications Registry with all-India jurisdiction, at Chennai, where right-holders can register their GI.