Malaysian firm loses rights to use 'Ponni' as trade mark

The landmark ruling was made by a Malaysian High Court 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 January 22 this year.

The High Court, in its first case of recognition of Geographical Indication (GI) in Malaysia, ruled that the company 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, Justice Azahar concluded that Syarikat Faiza was not entitled to register the word 'Ponni' as a trade mark.

He 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 adding 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.

"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.