SpicyIP:The Ponni Poach

The 'Ponni' Rice,considered as the grain of the masses in South India is the hot topic of a current cross border IPR controversy.

The Ponni has come under siege, with the Malaysian Commodities giant Syarikat Faiza having acquired the trademark rights for this grain under the Malaysian Trademark Act.To add insult to injury this right also entitles Faiza to package and market varieties that closely resemble the attributes of the Ponni grain.

Syarikat Faiza Sdn Bhd, which imports Sona Masoori Ponni rice from India, registered the variety under the Malaysian Trademark Act and sent legal notices to other importers asking them not to use the word ‘Ponni’ to describe their product.
One of the aggrieved importers has challenged the trademark given to Faiza and the trademark department has assured that it would cancel the ‘Ponni’ registration, which, however, is yet to happen.(Livemint)

Cultivated in the Cauvery Delta of South India for several decades now, constitutes a traditional agricultural produce of India.

Still reeling and coping with the recent Government directive to ban all Non-basmati rice exports,this comes as an added punch in the face for the producers/ exporters of Ponni. Ponni holds significant export potential and market sway in many overseas market.Ponni Rice exports bring in an estimated annual revenue of 500 crores.This development could adversely impact the export potential of the Ponni and dilute its competitive advantage in the world market.

The producers of Ponni contend that the grain bears traditional antecedents and hence should be treated as a G.I rather than a trademark.It is unfortunate that the Ponni has not been registered as yet.It does make prudent IPR sense to acquire a G.I right albeit posthumously as a G.I confers better standing for a product in world markets
In this context ,it is also relevant to take note of Article 22 of TRIPS that says

'A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member is of such a nature as to mislead the public as to the true place of origin.'

This incident takes us for a jog down memory lane when the Basmati was patented by the Texas based corporation Ricetec and a crusade was launched by India to recover the lost grain.Incidentally as of May 15th,India empowered its Agriculture Export Promotion Agency to protect indigenous farm and horticulture products from being patented abroad.

A repeat of the classic case once again that exposes the dark underbelly of unfair competition strategies wherein an IPR is acquired to purposefully erode the market value of a product bearing a different geographical origin and encompassing traditional human endeavor

Pertinent it is in this context that the WTO has recently stipulated that countries dismantle canalising of rice by 2010.Underpinnings of the Ponni imbroglio seem to indicate that Kuala Lumpur’s decision to grant the Ponni trademark could have been dictated by the fact that its state-owned canalising agency has to go out of business soon. It makes sense, then, to grant the trademark to Faiza and route Ponni imports into the country, the biggest Ponni consumer in the world, through it.Make hay while the sun shines?!!?

The Indian commerce ministry is in the process of formulating a strategy to effectively address the Malaysian move.The fact that Ponni has spawned many hybrid varieties some of them bearing Japanese origins could dilute the Indiancase.However the TNAU(Tamilnadu Agricultural University)that released the Pure white line Ponni rice has announced that it will contest the Malaysian trademark.

Lessons to be learnt from the Incident include:-

(a)Vigilance in protecting IPRs is non-negotiable in view of current chronicles.

(b)Corporates and government bodies need to shore up on global branding strategies to establish presence and identity of their brands in the overseas markets.'Produce local and protect global'seems to hold good!This mantra assumes added importance especially so in the case of goods that are susceptible to biopiracy and trans border infringement.

(c)Though touted as a feminine right vis a vis the other genres ,the G.I right holds far reeaching implications from a global trade perspective.Producers would be well advised to register and leverage this IPR as well.

From a policy perspective India needs to increase its decibel power to seek equal protection for its native G.Is in agriculture ,horticulture and other indigenous produce.Currently TRIPS limits the extra protection provision to wines and spirits only.(Article 23 of TRIPS)This is currently being debated at the 'horizontal process in the Doha round of talks(I will blog on it shortly)The Ponni dispute reiterates the need for uniform protection of G.Is across all categories.

The term Ponni translated in Tamil means 'gold'......considering its commercial value it sure is well its worth in gold and calls for a robust exercise to restore it to its origins!