Basmati saga continues as New Zealand upholds rejection of certification mark
Jocelyn Bosse
Basmati saga continues as New Zealand upholds rejection of certification mark
Jocelyn Bosse Sunday, November 02, 2025 - basmati, certification marks, india, Jocelyn Bosse, New Zealand, plant varieties, trade marks
Last month proved to be a busy period for decisions about the registrability of marks comprising the term BASMATI. On the 30th of October, the High Court of New Zealand handed down its judgment in the case APEDA v Commissioner of Trade Marks [2025] NZHC 3264 (the decision hasn't been published online yet, but readers can find a copy here), confirming that BASMATI can't be registered as a certification mark if it excludes producers outside of India.
Photo by congerdesign from Pixabay.
Background
Basmati is a well-known type of long-grain, aromatic rice. In 2019, an Indian statutory authority called the Agricultural and Processed Food Products Export Development Authority (APEDA) applied to register the word BASMATI as a certification mark for "rice" in Class 30.
The Intellectual Property Office of New Zealand (IPONZ) rejected the application by decision [2024] NZIPOTM 26 (see discussion by Katfriend Kimberley Evans here). The application was refused on two grounds:
- the mark lacked sufficient distinctiveness to achieve registration as a certification mark; and
- the certification rules provided by ADEPA were insufficient to meet the relevant statutory requirements.
IPONZ found that use of the certification mark BASMATI as proposed by APEDA would not serve to distinguish Indian basmati rice from basmati rice grown by traders in other regions (especially Pakistan, but also other countries like Nepal). ADEPA’s own evidence showed that basmati rice sold in New Zealand originated from a wide geographical range and was not limited to rice grown in India. ADEPA's survey evidence also demonstrated that the meaning attributable to the word BASMATI in New Zealand is rice of the basmati variety, not that the rice has been grown in a particular area in India.
Therefore, the mark was not distinctive in the sense required for certification marks. APEDA appealed.
The High Court decision
Justice Boldt handed down his judgment on Thursday.
One of the issues before the Court was the recognition of geographical indications under the TRIPS Agreement. The judgment confirmed that TRIPS obliges members to ensure the public is not misled about the true place of origin of goods offered for sale, which is achieved in New Zealand through a combination of the Fair Trading Act 1986 and the tort of passing off. Justice Boldt continued that "TRIPS does not oblige members to recognise and enforce GIs which are registered in other countries but cannot satisfy the relevant requirements under domestic law." (This point was also affirmed by the Court of Appeal of Kenya last month, see IPKat here).
Turning to the issue of distinctiveness, the Court noted that the proposed regulations for the certification mark "would entirely exclude Pakistani producers, who would infringe APEDA’s mark whenever they use "basmati" to describe their rice, though APEDA insists it does not propose to enforce the mark in that way."
Although the case law on distinctiveness has never been applied in the context of a certification mark, Justice Boldt considered that the same key principles would apply:
- whether the trade mark, on its face, can achieve the goal of distinguishing that traders product from competitors’ products; and
- as an important guide, whether other traders are likely, in good faith, to want to use the same or a similar mark in relation to their own products.
Justice Boldt concluded that "Because Pakistani producers use the term basmati in good faith as an accurate description of their own product, it is impossible for the word BASMATI to distinguish Indian rice, certified by APEDA, from Pakistani rice which has not been so certified." Whilst APEDA suggested that additional labelling could distinguish Indian and Pakistani basmati rice, the judge held that this "misses the point" because the "mark must be distinctive on its face; it cannot rely on accompanying information which might make the position clearer." Even after receiving special leave to propose further conditions and/or regulations which would appropriately limit the BASMATI mark to ensure the interests of Pakistani producers were protected, APEDA did not resolve this contradiction at the heart of its application.
The judge noted that this outcome might be compared to the fate of the Mānuka honey certification mark applications filed by the New Zealand Mānuka Honey Appellation Society. The EUIPO and UKIPO rejected the applications on the basis that the name "Mānuka" alone wasn't capable of distinguishing New Zealand mānuka honey from uncertified, but equally genuine, honey produced in Australia. In such cases, unless there is cooperation amongst the authorities in both countries, the transnational nature of production can be an insurmountable stumbling block for registration as a certification mark.
Final Thoughts
Several geographical indications are produced across multiple jurisdictions, but their recognition requires cooperation. We saw the importance of this a few years ago, when the Irish and UK Governments negotiated an agreement to ensure that farmers in Northern Ireland were included in the EU PGI protection of "Irish Grass Fed Beef", which joined several existing registrations for all-Ireland GIs, such as "Irish Whisky" and "Irish Cream" liqueur.
So far, the BASMATI saga has only highlighted the importance of cooperation in such transboundary situations - regardless of whether protection is sought through certification/collective marks or through the EU's sui generis geographical indications scheme. Of course, we are still waiting for a decision from the Federal Court of Australia, which is due to hand down its ruling in the appeal from the 2022 decision rejecting APEDA's application for a certification mark - but this Kat would be surprised to see a different outcome from the New Zealand decision.
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https://ipkitten.blogspot.com/2025/11/basmati-saga-continues-as-new-zealand.html