Basmati rice certification mark rejected in Australia

The Federal Court of Australia has finally weighed in on the Basmati rice saga. While this Kat was distracted by other curiosities, the judgment in APEDA v Registrar of Trade Marks [2026] FCA 1125 was handed down in August. Justice Dowling dismissed the appeal, finding that the BASMATI certification mark was not capable of distinguishing goods certified by APEDA from other goods not so certified, under section 177 of the Trade Marks Act 1995 (Cth).

Background

Photo by Ahmad No More via Pexels.

Basmati is a registered geographical indication in India, which was granted in 2016. Agricultural and Processed Food Products Export Development Authority of India (APEDA) applied in 2019 to register a certification mark for the word BASMATI for rice from India.

At the end of 2022, a delegate of the Australian Trade Mark Office upheld the rejection of the application, finding that "based on its ordinary signification other traders would have a legitimate desire to use the word Basmati in relation to rice and rice derived products that are not certified by APEDA."

APEDA appealed. It was an appeal de novo to consider the certification mark application on the merits.

The Judgment

After the hearing but before the judgment in this appeal, Justice Burley delivered judgment in the Republic of Peru case (which accepted PISCO as a certification trade mark for alcoholic beverages excluding beer), so Justice Dowling had the opportunity to consider its application in this appeal.

The decision in Republic of Peru confirmed that certification marks, like ordinary trade marks, benefit from a presumption of registrability.

Relevance of the rules

Certification marks have additional considerations beyond those for ordinary trade marks when determining whether the certification mark is inherently adapted to distinguish. Namely, the judge is "assessing inherent adaptation to distinguish goods certified by the owner of the mark from goods not certified at all, and to distinguish the owner's certified goods from those that may be certified by others."

The mark BASMATI did not, on the face of it, indicate that the product has been approved, accredited or certified in a particular way. But the court held that this was not fatal.

APEDA says context of use will make it clear that the mark is a certification mark, including the rule that the packaging must include the statement "BASMATI is a Certification Trade Mark of the Agricultural and Processed Food Products Export Development Authority, India". Nevertheless, Justice Dowling found that the plain wording of the provision (in context of the whole Part on certification marks) "direct attention to the certification mark itself and not how it is used in accordance with any rules or conditions." The mark BASMATI needed to be inherently adapted in and of itself.

Additionally, APEDA highlighted its proposed condition to make it clear that the mark cannot be used to attack legitimate use of the name Basmati to denote rice originating from Pakistan. But the court emphasised that this had no effect on the assessment of whether the mark was inherently adapted to distinguish.

Ordinary signification

Following Republic of Peru, the ordinary signification of the word BASMATI should be understood from the perspective of ordinary persons in Australia who will purchase, consume or trade in the goods.

The court took account of the evidence as a whole, including the sales of Basmati rice in Australia (which showed that substantial volumes came from Pakistan as well as India). Since the circumstances of this case were different from Republic of Peru, Justice Dowling accepted that dictionaries and other reference texts could have more probative value. The court also considered the evidence from consumer surveys. Taken together, His Honour concluded that "the ordinary signification of the word Basmati in Australia is of a type of rice, that is grown in multiple locations, including India and Pakistan."

Other traders' legitimate need to use the word

Since the ordinary meaning of BASMATI extended to rice produced in Pakistan, the court accepted that the mark is a term that other traders, without improper motives, might legitimately need to use in respect of their goods.

Could the rules and proposed conditions overcome these deficiencies?

Justice Dowling concluded that this was not one of the "very exceptional cases" where the rules could overcome the fact that "ordinary consumer would understand that word as referring to a particular type of rice that is grown in both India and Pakistan, such that the BASMATI mark is not inherently adapted so to distinguish Basmati rice certified by APEDA from Basmati rice not so certified."

The transnational geographical indication

APEDA submitted that BASMATI is a transnational geographical indication which spans the border of two countries, India and Pakistan. It argued that since Australia is a TRIPS signatory with obligations to protect GIs, it must interpret its certification mark regime to accommodate these obligations. However, Justice Dowling surveyed the history of certification marks in Australia, which supported the conclusion that the regime pre-dated the TRIPS Agreement and that "the TRIPS Agreement obligations do not provide a principled basis to expand the scope of s 177 [on certification marks] to ensure that a geographical indication not otherwise protected under Australian law falls within its terms."

Furthermore, Justice Dowling noted that the circumstance that BASMATI is recognised as a geographical indication in multiple jurisdictions does not meet that test where the mark is sought to be registered in respect of rice which has been certified under the regime of one jurisdiction alone.

Final Thoughts

In India, the Basmati GI was granted in 2016, while Pakistan separately registered the GI under its national framework in 2021. Each country filed separate applications to register the Basmati GI in the EU, and they have been disputing over the applications ever since.

The decision from the Federal Court of Australia joins a string of judgments which confirm that the registration of a GI in one country does not create an obligation for it to be recognised as a certification mark in other TRIPS members. And most importantly, when a GI product is legitimately produced across multiple jurisdictions, its recognition requires transboundary cooperation. Otherwise, the cross-border nature of production can be an insurmountable stumbling block for registration as a certification mark.

The IPKat

Buscar este blog