Of mice and rice: when registration's not nice?

Most Kats get by pretty well on a balanced diet of delicacies, preferably four-legged ones which squeak and two-legged ones which flap.  Apart from being made of meat, which is what they normally eat, their live prey provides these largely sedentary animals with much-needed exercise in as much as they have to catch them before they can have their dinner.  As a healthy alternative, rice isn't very appealing.  Although 'rice' and ''mice' sound quite similar to an inattentive moggie, rice it doesn't run when you chase it and, unlike instant meals like mice and birds which you can eat when you've caught and peeled them (or whatever), rice has to be cooked -- not an easy task for most felines.

If cats were however to eat rice, it would be fitting if the cat-in-chief -- the lion, which is the king of beasts -- would dine on Basmati, which is the king of rice, while lesser cats would be feasting on Sharbati.  This leads to the question on every IP lawyer's lips: is Sharbati a generic term for a type of rice, or does it indicate a specific trade source?  This issue was considered by the the Fifth Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) back on 1 March of this year in Case R 1095/2011-5 Amira Foods (India) Limited -- a decision which was published online while all the Kats were otherwise engaged. The members of this blog team might indeed have missed it forever, were it not for the vigilance of one of their Indian friends who has sent the following account of it while respectfully requesting to remain under the discreet cover of anonymity:

"Can a variety name of a rice or wheat be registered as a trade mark in the European Union?

In March June 2009 an Indian company, Amira, applied to register the word SHARBATI as a Community trade mark (CTM) for various goods in Classes 29 and 30.  This application was partially rejected by the Examiner in respect of ‘rice, flour and preparations made from cereals, bread, pastry and confectionery’ (Class 30), principally because SHARBATI was either a kind of Indian rice or a kind of flour made from SHARBATI wheat; consequently the mark was devoid of distinctive character. In reaching her conclusion, the Examiner relied upon an impressive quantity of web extracts from Indian traders who described SHARBATI in a generic sense as a variety of rice as well as extracts that referred to it as a wheat variety.

Before the Fifth Board of Appeals, Amira argued, inter alia, that the actual consumer in Europe is incapable of understanding SHARBATI as a descriptive term for rice and flour and that the internet extracts relied upon by the Examiner, being of Indian origin, would never be consulted by consumers in the European Union.

The Board's Rapporteur invited Amira to file observations on Article 7(1)(c) of the CTM Regulation, which states that descriptive indications shall not be registered, considering that the findings of the Examiner were correct and supported by further evidence. In particular, the Rapporteur referred to an official communication from the Agricultural and Processed Food Products Export Development Authority (APEDA), a statutory body under the Indian Ministry of Commerce which is primarily in charge of export and development of agricultural and processed food products. That communication clearly stated that SHARBATI was a variety of rice, that the right to use that term vested with  stakeholders such as farmers, traders and exporters and that permitting the registration of such names would lead to a situation where legitimate use of the term to describe the products in question would fall foul of law.

Amira argued that, since the Examiner refused the application under Articles 7(1)(b) (absence of distinctive character) and (d) (use as a trade term), the Board could not add a further absolute ground for refusal. 

The Board rejected the appeal for various reasons. In particular:

• There was a substantial part of the relevant public, being rice and wheat consumers, which was interested in Indian cuisine in Europe. Due to Commonwealth history, such a public may be found in the United Kingdom as well as in other countries owing to "India's weight as an emerging country" [These are the Board's words.  The IPKat imagines that India weighs much the same now as she did a few decades ago; Merpel loves the metaphor of an 'emerging country' -- it sounds as though the subcontinent is rising up out of the Indian Ocean ...] .

• Amira's argument that Article 7(1)(c) was inapplicable as SHARBATI was not known or used within the EU was misplaced: there was no need for a descriptive indication to be in general use in the EU. This was clear from the language of that Article, which reads 'may serve'.

• The fact that a product was known outside the EU was a strong indication that it may become known within the EU, specially in this case considering the presence there of a large number of traders and consumers of Indian rice and wheat.

• The provisions of trade mark law applied to plants too -- and the name of a plant, in principle and independently if the variety and its name, new or old, must be rejected under Article 7(1)(c) of CTMR unless it had acquired distinctiveness.

• SHARBATI was described as the most popular non-Basmati rice variety; many companies may be found offering SHARBATI rice and SHARBATI wheat for export from India to, inter alia, the EU. Allowing the registration of SHARBATI as a trade mark for 'rice, flour, and preparations made from cereals, bread, pastry confectionery' would let Amira monopolise a varietal name and could give rise to a situation where other competitors trying to sell Sharbati rice or wheat within the EU would not be able to describe their goods by using the name of that variety.

• As regards Amira's registration of the same mark in several other jurisdictions, which was produced as supporting evidence, the Board found that it was not bound by these registrations as they were obtained in countries outside the EU with different examination practices.

• SHARBATI was therefore a term that must remain available for free use in commerce for "rice, flour preparations, made from cereals, bread, pastry and confectionery" falling in class 30.

The order has special significance for the Government of India especially in the protection of another famous variety of rice called BASMATI in the European Union. Basmati rice itself has several varieties that are notified under the Indian Seeds Act 1966 and are often sought to be registered or used as trade marks. With this order, India hopes to strengthen its legal ammunition against such uses."

Cat rice here 
Pat Rice here 
Fat rice here 
Mice rice here