Federal Court of Australia

Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India v Registrar of Trade Marks [2026] FCA 1125

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be dismissed.

2.    The appellant pay the respondent’s costs as agreed or taxed.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

DOWLING J

Introduction and summary

1    Basmati rice is grown in the Indo-Gangetic plains below the foothills of the Himalayas which includes parts of North India and Pakistan. Its unique characteristics include its nutty aroma, long and slender grains, soft texture and delicate curvature.

2    The appellant, the Agricultural and Processed Food Products Export Development Authority of India (APEDA), represents the interests of the “producers and stakeholders” of Basmati rice from India and provides a licensing scheme for the export of Basmati rice from India to Australia. APEDA filed two certification trade mark applications with the Trade Marks Office. The first for the word mark BASMATI, and the second for a device mark incorporating the word BASMATI.

3    The respondent, the Registrar of Trade Marks, declined to accept the applications for registration. The Registrar relied on s 177 of the Trade Marks Act 1995 (Cth). Section 177(1) relevantly provides that an application must be rejected if the trade mark is not capable of distinguishing goods certified by APEDA from goods not so certified. Section 177(2) provides that in deciding whether or not the certification trade mark is capable of so distinguishing those goods, the Registrar must take into account: (a) the extent to which the certification trade mark is inherently adapted to distinguish those goods; or (b) the extent to which, because of its use or of any other circumstances, the certification trade mark has become adapted so to distinguish those goods.

4    After the Registrar declined to accept the applications, and at APEDA’s request, a hearing was conducted before a delegate of the Registrar. The delegate determined to maintain the refusal to accept the word BASMATI for registration, but accepted the registration of the device mark incorporating the word BASMATI: Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India [2022] ATMO 228 (22 December 2022) (the ATMO Decision).

5    The delegate found 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. He concluded therefore that the word is not to any extent inherently adapted to distinguish, within the meaning of s 177(2)(a) of the Act: ATMO Decision at [47]. The delegate then considered the extent to which, because of its use or of any other circumstances, the word mark has become adapted to distinguish those goods within s 177(2)(b) of the Act. He was satisfied that BASMATI does not distinguish APEDA’s certified Basmati rice from the Basmati rice of others that is not so certified: ATMO Decision at [56]. Accordingly, he determined that there were grounds for rejecting the word mark under s 177 of the Act: ATMO Decision at [59].

6    APEDA now appeals the delegate’s decision to refuse the registration of the word BASMATI.

7    APEDA relies on a notice of appeal that sets out ways in which it contends the delegate erred. However, the appeal is an appeal de novo and it is not necessary for the Court to find error in the decision of the delegate. The question for the Court is whether, on the evidence before it, the application should be accepted on the merits: Jafferjee v Scarlett (1937) 57 CLR 115 at 126 (Dixon J); Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300 at 308 (Dixon CJ, Williams and Kitto JJ); Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 at [32]–[33] (French J) (Branson J agreeing generally at [64] and Tamberlin J agreeing at [104]); and more recently see Republic of Peru (Peruvian State) v Registrar of Trade Marks [2026] FCA 791 at [4] (Burley J).

8    For the reasons explained below, I am not satisfied that the certification trade mark BASMATI is capable of distinguishing goods certified by APEDA from goods not so certified. Accordingly, the appeal is dismissed.

Relevant statutory history and provisions

A brief history of the certification trade mark provisions

9    The parties made submissions on the history of the certification trade mark provisions of the Act. Some of that history informs the proper approach to s 177. I consider the following to be salient.

10    Under s 22 of the predecessor Trade Marks Act 1905 (Cth), a trade mark could be registered on the application of any person, association or authority who “undertakes the examination of any goods in respect of origin, material, mode or conditions of manufacture, quality, accuracy, or other characteristic, and certifies the result of such examination” if the Minister judged it to be to the “public advantage” to permit the registration of the mark.

11    In the now replaced Trade Marks Act 1938 (UK) (1938 UK Act), s 37(1) provided that a mark “adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods not so certified shall be registrable as a certification trade mark”.

12    In dealing with an application for registration of a certification trade mark, the Registrar was required under cl 1(3) of the First Schedule to the 1938 UK Act to have regard to like considerations that applied to registration of a standard trade mark, as well as any other considerations relevant to an application under s 37, “including the desirability of securing that a certification trade mark shall comprise some indication that it is such a trade mark”. Davidson M and Horak I, Shanahan’s Australian Law of Trade Marks and Passing Off (7th ed, Lawbook Co, 2022) states at [55.15] that this resulted in a practice whereby the Registrar would insist that the words “certification trade mark” appear in or in close proximity to the trade mark.

13    In 1955, Australia enacted the now replaced Trade Marks Act 1955 (Cth) (1955 Act). Part XI of the 1955 Act forms the immediate predecessor to Part 16 of the Act. Section 83 of the 1955 Act substantially replicated the requirements of s 37 of the 1938 UK Act in relation to the distinctiveness of a certification trade mark. Section 83 reads:

(1) Where a mark is adapted in relation to goods to distinguish in the course of trade goods certified by a person, or by another person authorized by the first-mentioned person, in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic from goods not so certified, the mark may, upon the application of the first-mentioned person, be registered in Part C of the Register, in the name of the applicant as proprietor, as a certification trade mark in respect of those goods.

(2) A mark is not so registrable upon the application of a person who carries on a trade in goods of the kind certified.

(3) In determining whether a mark is adapted so to distinguish in relation to goods, regard may be had to the extent to which—

(a) the mark is inherently adapted so to distinguish; and

(b) by reason of the use of the mark or of any other circumstances, the mark has become adapted so to distinguish.

14    As Burley J observed in Republic of Peru at [75], “There is little daylight between the requirements of s 83(3) of the 1955 Act and s 177(2) of the [current] Trade Marks Act”.

15    In 1994, Australia entered into the Agreement on Trade-Related Aspects of Intellectual Property Rights, otherwise known as the TRIPS Agreement. That agreement provides for recognition of what are known as geographical indications. A geographical indication is intended to identify a good as originating from a specific territory of a Member state, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin.

16    As is clear from that chronology, the certification trade mark regime pre-dated Australia’s obligations under the TRIPS Agreement. The certification trade mark regime which appears in its current form in Part 16 of the Act was not enacted as a way of implementing Australia’s obligations under the TRIPS Agreement. I accept, as the Registrar submitted, that the TRIPS Agreement obligations do not provide a principled basis to expand the scope of s 177 to ensure that a geographical indication not otherwise protected under Australian law falls within its terms. I return to this matter further below.

The standard trade mark provisions

17    As both parties submitted that assistance might be drawn from the approach to standard trade mark provisions, as distinct from the certification trade mark provisions, I provide some explanation of those provisions.

18    In cases of registration of standard trade marks, s 20(1) of the Act provides that the registered owner of the trade mark has exclusive rights to use the trade mark and to authorise other persons to use the trade mark in relation to the goods and/or services in respect of which the trade mark is registered.

19    Section 41(1) of the Act relevantly provides a ground for rejecting an application where “the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons”.

20    Section 41(3) provides that a trade mark is taken not to be capable of distinguishing where a trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, and where the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

21    Section 41(4) provides that a trade mark is taken not to be capable of distinguishing where the trade mark is to some extent, but not sufficiently inherently adapted to distinguish the designated goods or services from the goods or services of other persons, and the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(1)    the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(2)    the use, or intended use, of the trade mark by the applicant; and

(3)    any other circumstances.

22    The first note to s 41(4) provides that trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate: (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or (b) the time of production of goods or of the rendering of services. The note is part of the Act or part of the relevant extrinsic material: see Construction, Forestry and Maritime Employees Union v Australian Industry Group [2025] FCAFC 187; 314 FCR 187 at [15] (Wheelahan, Jackson and Dowling JJ).

23    By operation of s 170, s 41 does not apply to certification trade marks. However, as explained, both parties submitted that the approach to s 41 informs how the test under s 177 is to be applied. I return to this in more detail below.

The certification trade mark provisions - Part 16 of the Act

24    The provisions of the Act dealing with certification trade marks are contained in Part 16, ss 168 to 183. The objects of that part include providing to what extent, and subject to what modifications or additions, the provisions of the Act relating to standard trade marks apply to certification trade marks.

25    Section 169 defines what a certification trade mark is. It relevantly provides:

A certification trade mark is a sign used, or intended to be used, to distinguish goods or services:

(a) dealt with or provided in the course of trade; and

(b) certified by a person (owner of the certification trade mark), or by another person approved by that person, in relation to quality, accuracy or some other characteristic, including (in the case of goods) origin, material or mode of manufacture;

from other goods or services dealt with or provided in the course of trade but not so certified.

Note: The goods or services certified may be those of any person, including the owner of the certification trade mark or any person approved by the owner for the purpose of certifying goods or services.

26    Section 171 provides for “Rights given by registration of a certification trade mark”. It states that s 20 applies in relation to a certification trade mark as if s 20(1) were omitted and the following provision was substituted:

“(1) If a certification trade mark is registered, the registered owner has, subject to this Part, the exclusive rights to use, and to allow other persons to use, the certification trade mark, in relation to the goods and/or services in respect of which the certification trade mark is registered. The registered owner may, however, use the certification trade mark only in accordance with the rules governing the use of the certification trade mark.

Note: For the rules governing the use of the certification trade mark see section 173.”.

27    Section 173(1) provides that a person who has filed an application for the registration of a certification trade mark must, in accordance with the Trade Marks Regulations 1995 (Cth), file a copy of the rules governing the use of the certification trade mark. Section 173(2) provides that the rules must specify matters including: (a) the requirements (the certification requirements) that goods and/or services must meet for the certification trade mark to be applied to them; and (b) the process for determining whether goods and/or services meet the certification requirements.

28    Section 176 deals with the Registrar’s acceptance or rejection of an application. The provision reads:

176 Acceptance or rejection of application

(1) The Registrar must accept the application if:

(a) the application is made in accordance with this Act; and

(b) there are no grounds for rejecting the application; and

(c) the Commission has given a certificate under subsection 175(2).

Otherwise the Registrar must reject the application.

(1A) However, the Registrar must give the applicant an opportunity to be heard before rejecting the application solely because one or both of the conditions in paragraphs (1)(a) and (b) are not met.

(2) The Registrar may accept the application subject to conditions or limitations.

Note: For limitations see section 6.

…

29    Section 170 of the Act provides that, subject to some exceptions, provisions of the Act relating to trade marks apply to certification trade marks. The grounds on which a trade mark application may be rejected are set out in Division 2 of Part 4 of the Act, except for s 41 (trade mark not distinguishing applicant’s goods or services), which is replaced by s 177.

30    Lastly, s 177 provides:

177 Additional ground for rejecting an application or opposing registration—certification trade mark not distinguishing certified goods or services

(1) In addition to any other ground on which:

(a) an application for the registration of a certification trade mark may be rejected; or

(b) the registration of a certification trade mark may be opposed;

the application must be rejected or the registration may be opposed if the trade mark is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified.

…

(2) In deciding whether or not the certification trade mark is capable of so distinguishing goods or services certified by the applicant or an approved certifier, the Registrar must take into account:

(a) the extent to which the certification trade mark is inherently adapted so to distinguish those goods or services; or

(b) the extent to which, because of its use or of any other circumstances, the certification trade mark has become adapted so to distinguish those goods or services.

31    As explained, s 177 is the provision on which the Registrar relied in declining to accept the application. It is central to the questions before the Court, that is whether, on the evidence before it, the application for the certification trade mark BASMATI should be accepted.

The Republic of Peru judgment

32    After the hearing in this matter, and on 23 June 2026, Burley J delivered judgment in Republic of Peru. That is the first decision of this Court concerning a certification mark application rejected pursuant to s 177 of the Act. The parties provided supplementary submissions about the impact of that decision on this appeal. I consider those submissions and address the approach adopted by Burley J below.

Issues arising from the application of the provisions

33    A number of issues arise on the application of the above certification trade mark provisions to the present application. They are each addressed in the “Consideration” section below. They include: the proper approach to the test under s 177; how the approach to s 41 and standard trade marks informs that approach; the applicability of the presumption of registrability; the approach to “inherently adapted” in s 177(2)(a); the breadth and content of “use and other circumstances” in s 177(2)(b); whether the mark needs to indicate on its face that it is performing a distinguishing function; the relevance of the rules, and proposed condition, accompanying the application in assessing s 177; and the relevance of geographical indications in assessing s 177.

The decision below and grounds of appeal

34    As discussed above, the delegate in the ATMO Decision determined to maintain the refusal to accept the word BASMATI for registration.

35    The notice of appeal filed in this Court contains five grounds of appeal. Accepting that the appeal is de novo and the task of the Court is to determine the application for registration on its merits, the grounds are illustrative of the issues between the parties. The grounds in the notice of appeal complain that the delegate erred:

(1)    in finding that there was a ground for rejecting the certification trade mark under s 177 of the Act;

(2)    in finding that the certification trade mark was not to any extent inherently adapted to distinguish the goods certified by APEDA from goods not so certified;

(3)    by failing to give any, or sufficient, weight to the extensive body of evidence relating to the use of the name BASMATI in Australia in relation to Indian Basmati rice;

(4)    by failing to give any consideration to the relevant other circumstances (within the meaning of s 177 of the Act), namely that BASMATI is a transnational geographical indication; and

(5)    in finding that the condition that all product packaging bearing the mark would also prominently bear the words “product of India” (or words to that effect) did not serve to render the certification trade mark capable of distinguishing the goods certified by APEDA from goods not so certified.

36    Those matters were, in various ways, addressed by the parties and are considered below.

The Agreed facts

37    The parties relied upon a detailed statement of agreed facts. That statement was supplemented by an addendum and a further addendum.

38    The statement of agreed facts and addenda were extensive. I set out below the agreed facts most pertinent to my consideration of the appeal.

APEDA and the Basmati geographical indication

39    APEDA is the Indian statutory body with responsibility for protecting and regulating the use of the Indian geographical indication BASMATI, both within India and internationally.

40    BASMATI is a registered geographical indication in India under the Indian law known as the Geographical Indications of Goods (Registration and Protection) Act 1999 (India).

41    BASMATI has been registered as a geographical indication under Indian law since 26 November 2008.

Basmati growing area

42    Basmati rice is grown in a region of the Indian sub-continent which includes parts of North India and adjacent parts of Pakistan below the foothills of the Himalayas. This area forms part of what is known as the Indo-Gangetic plains (the Basmati Growing Area).

Certification of Basmati rice varieties

43    In India, only rice varieties that have been certified as Basmati rice varieties can be used to cultivate BASMATI.

44    In order for a rice variety to be certified as a Basmati rice variety in India, it must meet standards set by the Central Seed Committee, an authority established under the Seeds Act 1966 (India) (Seeds Act) (the Indian BASMATI Standards).

45    There are currently 43 notified varieties of Basmati rice in India.

46    The certification of Basmati rice varieties in India involves testing in accredited laboratories for the characteristics associated with BASMATI (such as elongated grains and aroma characteristics).

47    The Indian BASMATI Standards set out “primary quality characteristics” and “ancillary characteristics” which the rice variety must meet in order to be a Basmati rice variety in India.

Basmati growing process in India

48    Certified BASMATI production in India requires the use of specific techniques associated with the germination and transplantation of Basmati variety seeds, the irrigation of Basmati fields, the methods of production and the conditions associated with harvesting and storage.

Characteristics of BASMATI

49    Basmati rice cultivated in India and certified as BASMATI has the following characteristics: a nutty aroma; long, slender grains; soft texture; delicate curvature; a low glycaemic index compared to other types of rice; little or no breadthwise swelling on cooking; high integrity of grain on cooking; and linear kernel elongation on cooking. Those characteristics are the result of production controls referred to above.

Quality control and certification of rice as BASMATI

50    The parties agree that it is possible to objectively identify certified BASMATI from India by reason of the process of certification of seed varieties as BASMATI seed varieties and the distinctive characteristics of certified BASMATI from India. The authenticity and purity of certified BASMATI from India can also be identified by means of DNA testing.

51    Basmati rice is a product for the purposes of the Agricultural and Processed Food Products Export Development Authority Act 1985 (India) (APEDA Act) and all exports of Basmati rice must be registered with APEDA.

Basmati from India in Australia

52    Basmati rice cultivated in India has been exported to and sold in Australia for decades prior to 28 August 2018 (the priority date of the application). Basmati rice cultivated in India has been sold in all states and territories in Australia for many years prior to 28 August 2018.

53    Since 1988, over 306,095 metric tonnes of BASMATI from India have been exported to Australia from India. The value of BASMATI from India imported into Australia from India between 1988-2019 was around $380 million USD.

Summary of the witness evidence

54    Both parties filed affidavit evidence. None of the deponents were cross-examined. The following is a summary of the topics addressed by the deponents in order to give context to the consideration and assessment of that evidence below.

APEDA’s witnesses

Survey evidence - Mr John Sergeant

55    Mr John Sergeant is a market and social research consultant with expertise in survey design and statistics. He gave evidence about a survey conducted by Ipsos Australia Pty Ltd in April 2020, including on its methodology, data analysis and results. The survey was commissioned for the purpose of APEDA’s application to the Trade Marks Office and examined the public’s recognition of the name “Basmati”. The survey consisted of three questions. First, “What comes to mind when you hear the name BASMATI”? Second, “What more can you say about BASMATI”? Third, “Do you know where BASMATI rice comes from”? Mr Sergeant’s evidence is deployed in support of APEDA’s submission that amongst the Australian adult public, there is a strong association between the name Basmati and rice from India.

Evidence of sales and characteristics - Mr Gautam Varma

56    Mr Gautam Varma is the owner and Managing Director of Taj Food Sales Pty Ltd, a company which imports and sells food products, primarily Basmati rice from both India and Pakistan. Mr Varma gave evidence on the varieties, quantities and labelling of the Basmati rice imported by Taj Foods.

57    Mr Varma deposed to the sales of BASMATI rice from India, including the packaging of that rice which bears the name BASMATI and describes India as the country of origin. His evidence is used to support APEDA’s submission that due to extensive use in Australia over many decades before 28 August 2018, the BASMATI mark has developed a strong reputation and goodwill such that it distinguishes Basmati rice from India.

Evidence of archived webpages - Mr Stephen Stern

58    Mr Stephen Stern is a partner of Corrs Chambers Westgarth, the solicitors for APEDA. His affidavit annexes copies of archived pages obtained via the WayBack Machine website. These pages depict images of Taj Foods’ Indian Basmati rice packaging. APEDA relies on the images annexed to Mr Stern’s affidavit to provide examples of Basmati rice sold in Australia by Taj Foods, the packaging of which it says often bears labels such as “product of India”.

Evidence on geographical indications - Mr Bernard O’Connor

59    Mr Bernard O’Connor is the founding partner of the firm O’Connor and Company European Lawyers and a contract law Professor at the State University of Milan teaching agricultural law including the law of geographical indications. Since approximately 2010 he has been engaged by APEDA to act as its lawyer in the European Union (EU) and to assist its application to register “Basmati” as an EU geographical indication. He has authored several publications on the topic of geographical indications. He deposed as to the protection of geographical indications in international law (including through the TRIPS Agreement) and domestic trade mark law. APEDA relies on Mr O’Connor’s evidence in support of its submission that transnational or cross-border geographical indications are a recognised form of geographical indication within international legal discourse. APEDA submits that geographical indications are a relevant “other circumstance” for the purposes of s 177(2)(b) of the Act.

APEDA’s relevant other documentary evidence

60    APEDA tendered:

(1)    the Trade Development Authority of Pakistan’s (TDAP) application for registration of a certification logo mark which features the name BASMATI;

(2)    the IRISH WHISKEY certification trade mark registration and rules as an example of a single certification mark which relates to products coming from two countries, the Republic of Ireland and Northern Ireland; and

(3)    a bundle of extracts from the Register from several registered certification trade marks: the “Woolmark Device”, “PARMIGIANO REGGIANO”, “STILTON”, the “Australian Tourism Industry Council Star Device”, “DARJEERLING” and the “DARJEERLING device”, and “PARMA”.

61    APEDA relies on those extracts to support its submission that a mark can be capable of distinguishing certified goods, without any indication within the device itself that it is a certification mark.

The Registrar’s witnesses

Evidence of references in literature - Mr Adrian Richards

62    Mr Adrian Richards is a Supervising Hearing Officer within the Trade Marks and Designs Group of IP Australia. He describes attending the National Library of Australia and searching its catalogue for terms including “basmati” and “rice”. His affidavit annexes extracts of material obtained through the National Library of Australia’s catalogue, including from various cookbooks, dictionaries and the Oxford Companion to Food. The Registrar relies upon Mr Richards’ evidence to support her submission that there are repeated references to Pakistan as a place of origin of Basmati rice in publications in Australia.

Evidence of sales - Ms Centaine Mumford

63    Ms Centaine Mumford is a lawyer employed by the Australian Government Solicitor and represents the Registrar. Ms Mumford: (1) sets out data from Coles Group Limited explaining its sale of Basmati rice between 2013 and 2018, and annexes images of the packaging of some of the products sold; and (2) sets out data from Metcash Trading Limited explaining its sale of basmati rice between 2013 and 2018 and annexes images of the packaging of some of the products sold.

64    Ms Mumford’s evidence is used to support the Registrar’s submission that a substantial volume of Basmati rice from Pakistan is sold in Australia and that there are repeated references to Pakistan as a place of origin of Basmati rice online. It is also deployed to support the Registrar’s submission that there is no evidence the word “basmati” has been used in the context of sales in Australia to indicate that the rice has been certified in any way.

Consideration

65    Before assessing the application of s 177 of the Act, it is necessary to consider a number of preliminary issues relevant to that assessment. They are: the date of assessment; the presumption of registrability; how the standard trade mark cases inform the approach to s 177; whether a certification mark need indicate on its face that it is performing a distinguishing function; and the relevance of the rules and proposed condition in the assessment under s 177. Each are addressed below.

Assessment as at the priority date

66    The certification trade mark application for the word BASMATI was filed with the Trade Marks Office on 26 February 2019. The parties made submissions on the basis that the enquiries under s 177 are to be assessed as at the priority date of the application. I proceed on that basis. The priority date is 28 August 2018. That date is derived from the date a relevant mark application was filed in Sri Lanka: see ss 12, 29, 72.

67    While, the majority of the parties’ evidence was directed at the priority date in 2018, I note that it is permissible to take into account evidence occurring after that date to the extent it supports an inference that the certification trade mark is inherently adapted to distinguish the goods or services at the priority date. That is the approach taken in the cases considering standard trade marks under s 41: see Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968; 209 ALR 93 at [32] and [51] (Finn J); as applied in Community First Credit Union Ltd v Bendigo and Adelaide Bank Ltd [2019] FCA 1553 at [218]-[221] (Markovic J).

Presumption of registrability

68    The presumption of registrability operates in relation to applications for standard trade marks to presume that the Registrar, and the Court, must accept the application unless satisfied that the application was not made in accordance with the Act, or that there are grounds under the Act for rejecting it: s 33 of the Act.

69    In her written submissions, the Registrar submitted that “while there is a presumption of registrability that applies to standard trade marks, the difference in language used in s 176 of the Act (as compared to s 33 of the Act) suggests that no such presumption applies to certification trade marks.” Accordingly, the Registrar submitted that if the matter is left in doubt, the application should not be accepted.

70    However, in Republic of Peru, Burley J rejected the Registrar’s submission and determined that the presumption does apply to applications for certification marks. In her further submissions following that judgment, the Registrar submitted that given the submissions she otherwise makes, nothing turns on the presumption for the purposes of the present appeal. APEDA urges the Court to follow the approach of Burley J.

71    At [55] of Republic of Peru Burley J extracted that part of the Full Court’s reasons in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; 122 FCR 494 (French, Lindgren, Stone JJ) where French J explained that:

since the enactment of the Trade Marks Act 1995 the onus is no longer on the applicant to establish registrability as it was under the 1955 Act - Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at 372-373. The application must be accepted unless the Court is satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it.

72    At [56] Burley J recorded the Registrar’s acceptance that the difference in language between ss 176 and 33 “does not make any material difference to the analysis provided in” Woolworths and Kenman Kandy.

73    At [57] Burley J concluded that he could not see any reason, based on the scheme of the legislation, why a different standard would apply for the acceptance of certification marks within Part 16 compared to the standard for the acceptance of standard trade marks. At [58]-[62], his Honour addressed the Registrar’s submission that the presumption of registrability did not apply in relation to certification marks by the content of s 177. His Honour extracted the recommendation of the Working Party Report to which French J referred in Woolworths at [24]. In the Report at the subsection entitled “1.3.2 Test for registrability”, where the presumption of registrability is recommended, the Report includes a reference to the TRIPS Agreement and the protection of geographical indications. Recommendation 15F of the Report states that: “The test for registrability of certification marks in terms of their distinctiveness should be their capability of distinguishing as defined in 1.3.2, p42.” Burley J concluded that “this indicates that the presumption of registrability recommended in section 1.3.2 of the Working Party Report was equally intended to apply to certification marks”.

74    At [61] Burley J recorded the Registrar’s acceptance that there is no discernible policy basis for the difference in application of the presumption between s 41 and s 177. And at [62] his Honour concluded:

In my respectful view, the intentions espoused in the Working Party Report that the presumption applies to certification marks provides an indication that the position as set out in Kenman Kandy would equally apply to certification marks. Moreover, the language of s 41 of the Trade Marks Act in the form considered in Blount is significantly more prescriptive than the language of s 177: see Blount at 56F–58D. I do not consider that the language of s 177 provides sufficient support for the conclusion for which the Registrar contends to form a different view.

75    Respectfully, I agree with the approach taken by Burley J. Insofar as anything turns upon it, I will approach s 177 on the basis that the presumption of registrability applies to s 177 and that if the matter is left in doubt, then the application should be accepted.

The approach to s 177(2)(a) – inherently adapted to distinguish goods certified by APEDA

The s 41 standard trade mark authorities

76    As explained, both parties submit that the approach taken by the Court in assessing applications for standard trade marks has some relevance to an application for a certification trade mark. APEDA submits that “some of the concepts” may be employed, provided caution is exercised. The Registrar submits that the standard trade mark tests be applied but with the added requirement of “consideration of both the ability of the mark to distinguish goods or services certified by or on behalf of the owner of the mark both from those that are not certified at all, and its ability to distinguish the owner’s certified goods or services from those that may be certified by other persons”. As part of that submission she says certification trade marks have a quite different function, and serve a quite different purpose, to standard trade marks. She says while standard trade marks act as a “badge of origin”, certification trade marks act as a “badge of certification” to indicate that the goods or services in question have been certified as possessing particular characteristics.

77    Section 177(2)(a) relevantly provides that in deciding whether or not the certification trade mark is capable of so distinguishing goods or services certified by the applicant or an approved certifier, the Registrar must take into account the extent to which the certification trade mark is “inherently adapted so to distinguish” those goods or services. The accepted approach to determining whether a standard trade mark is “inherently adapted to distinguish” the applicant’s goods or services from the goods or services of other persons pursuant to s 41 of the Act is as set out in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514 (Kitto J) and Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337 (French CJ, Hayne, Crennan and Kiefel JJ).

78    Kitto J in Clark Equipment relevantly said at 514 that the test for capacity to distinguish in relation to s 41 of the Act concerned:

the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise ... of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

79    That test was examined in Cantarella where the High Court (French CJ, Hayne, Crennan and Kiefel JJ) explained at [71] that the process for determining whether a standard word mark is inherently adapted to distinguish involves first identifying the “ordinary signification” of the word and then undertaking an enquiry into “whether other traders might legitimately need to use the word in respect of their goods”.

80    In other words, Clark Equipment and Cantarella provide that there is a two-part test in relation to s 41. First, identifying the “ordinary signification” of the word, and then second, undertaking an enquiry into “whether other traders might legitimately need to use the word in respect of their goods”. The relevance of the s 41 approach to s 177 was most recently considered in Republic of Peru.

The Republic of Peru’s consideration of the s 41 cases

81    In Republic of Peru, Burley J considered the application of the standard trade mark tests in Clark Equipment and Cantarella when considering s 177 of the Act: at [63]-[79].

82    At [68] his Honour explained that if the Act defines a genus of intellectual property rights, being trade marks, standard trade marks and certification trade marks, each represent a distinct species. His Honour then identified that:

(1)    the two trade marks have a different purpose. A standard trade mark differentiates the source of the goods dealt with by one trader from goods dealt with by other traders and operates as a badge of trade origin. A certification trade mark indicates that goods have the characteristics nominated in the rules for certification;

(2)    the distinction may be seen by contrasting the rights conferred by registration of each species. Section 20(1) of the Act confers upon the registered owner the exclusive rights to use the standard trade mark and to authorise others to use the trade mark in relation to the goods in respect of which it is registered. Section 171 replaces s 20(1) in respect of certification trade marks and provides that the owner has exclusive rights to use and allow others to use the certification mark in relation to goods in respect of which the certification trade mark is registered, but specifies that the owner may use the mark only in accordance with the rules governing the use of the certification trade mark; and

(3)    it is apparent from at least s 181(2) of the Act, which provides an additional ground for revocation of a certification trade mark, that Part 16 of the Act pre-supposes that any trader who satisfies the requirements of the rules for certification is entitled to apply a certification trade mark and that every trader who so applies the mark must comply with those rules.

83    Burley J explained that these differences raise the question of how a certification trade mark is to be assessed for the purposes of s 177(2)(a), in particular, whether it is inherently adapted to distinguish. His Honour then examined the predecessor to Part 16 of the Act, being Part XI of the 1955 Act and particularly s 83. That section is relevantly the same as s 177.

84    His Honour extracted from the second edition of Shanahan where the learned author observed that while the 1955 Act provisions did not require a statement on the application of the mark that a mark is a certification trade mark (that is, as wording in proximity to the mark), its inclusion on a good must necessarily assist in establishing distinctiveness because a mark could not function as a certification trade mark “unless the public were educated in that way or by an appropriate advertising campaign (or more usually both) that the mark was in fact a certification mark.” His Honour also extracted where the author considered the formula provided in s 83(3) of the 1955 Act for determining whether a certification trade mark is “adapted so to distinguish”, the author said at page 227: “As Lord Parker explained in the “W & G” case [W and G du Cros Ltd’s Appn (1913) 30 RPC 660 at 672 (House of Lords)], distinctiveness must “largely depend on whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark”.

85    Ultimately, his Honour was concerned with the geographical name of Pisco as referable to the town on Peru’s southern coast close to vineyards where grapes used to make pisco are grown. And where Pisco has been produced within the Pisco region for more than 450 years. His Honour concluded, based on the ordinary signification of the word, that the trade mark application is inherently adapted so as to distinguish alcoholic beverages (excluding beer) and that the use made of PISCO as a designation of origin for product from Peru supports the conclusion that PISCO has become adapted to distinguish the alcoholic grape brandy beverage of that origin. His Honour was fortified in his conclusion by, first, the conclusion in Shanahan that, in relation to geographical names, such a name may well be registrable as a certification trade mark “if those who would have been entitled to use the name before registration will continue to have access to its use as a registered certification mark”. And, second, by the reasoning in Re Stilton Trade Mark [1967] RPC 173, which was concerned with similar provisions in the 1938 UK Act, where the geographical name Stilton was found to be both inherently adapted to distinguish, and had become adapted to distinguish cheese made by members of the applicant and certified by the applicant from cheese not so certified.

86    Taking account of both parties’ acknowledgement of the relevance of the approach to standard trade marks, the historical consideration in Shanahan, and Burley J’s approach in Republic of Peru, I approach the question of whether Basmati is “inherently adapted so to distinguish” under s 177(2)(a), by reference to approach to the standard trade marks, but with additional recognition that I am 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. With that acknowledgement, and caution, that approach involves first identifying the "ordinary signification" of the word, and then undertaking an enquiry into "whether other traders might legitimately need to use the word in respect of their goods". I assess both of those tests below. Before doing so I address two further matters that arose.

Does the mark need to indicate on its face that it is performing a distinguishing function?

87    APEDA submits that a mark can constitute a certification mark without any indication within the mark itself that it is a certification mark and refers to the bundle of extracts from the Register described at [60] above, including “PARMIGIANO REGGIANO” and “STILTON”.

88    The Registrar submits that although there is no express requirement that a certification trade mark indicate on its face that it is performing that distinguishing function, it is difficult to see how a mark that does not state or otherwise indicate it is acting as a sign that the relevant goods or services have been certified in some way (such as through words like “approved”, “accredited” or “certified”), could be inherently adapted to distinguish goods which have been certified by or on behalf of the owner of a certification trade mark from goods which have not been certified.

89    The Registrar relies on the following passage from Shanahan at [55.15]:

If, as is required by s 177, a certification mark is to distinguish “goods or services certified … from goods or services not so certified”, it must be apparent to those encountering the mark in use that the product in question has been certified in some way. Indeed the previous United Kingdom legislation expressly required that the Registrar have regard to “the desirability of securing that a certification trade mark shall comprise some indication that it is such a trade mark”, and in practice the British Registrar insisted that the words “certification trade mark” appeared in or in close proximity to the trade mark. In Australia, neither the 1995 Act nor the Registrar's practice demands such a statement, but its inclusion must necessarily assist in establishing distinctiveness, and a trade mark could not function as a certification mark unless the public were educated in that way or by an appropriate advertising campaign (or more usually both) that the trade mark was in fact a certification mark.

(Footnotes removed.)

90    The delegate in the ATMO Decision at [44] disagreed with this assessment. The delegate said that s 177:

requires only that the certification trade mark be capable of distinguishing due to its extent of inherent adaptation, or the extent to which because of its use or other circumstances it has become adapted to distinguish the relevant goods or services. A certification trade mark need not contain in itself an express or implied indication that goods in relation to which it is used have been certified, nor should it always be necessary that the public be educated that a sign is acting as a certification trade mark. A certification trade mark could in some circumstances distinguish in fact even if the public is not directly informed of its certification function. 

91    I agree with the delegate’s conclusion. That is, it is not necessary for the certification mark to expressly contain words such as “approved”, “accredited” or “certified”. While such words could impact the assessment of whether a mark is capable of distinguishing certified goods pursuant to s 177, they are not a requirement for registrability. I accept APEDA’s submission that a mark need not, on its face, indicate that it is a certification mark. That the mark BASMATI does not on its face, and alone, indicate that the product has been approved, accredited or certified in a particular way, is not fatal to APEDA’s application.

The relevance of the rules and condition proposed by APEDA

92    There was a dispute between the parties about the extent to which, if at all, the Court should take into account the rules, and condition proposed by APEDA, in the s 177 assessment. APEDA says, first, the Rules for the use of the Certification Trade Mark “BASMATI” which would govern use of the BASMATI mark pursuant to ss 171 and 173 would require the relevant goods to include a statement on the packaging that BASMATI is a certification mark of APEDA and prominently display the words “Product of India” on its packaging: rule 5.7. Second, APEDA says it proposes a condition of registration which makes it clear that the proposed certification mark cannot be used to attack legitimate use of the name Basmati to denote rice originating from Pakistan (the proposed condition). APEDA says both of those matters weigh strongly in favour of the appeal.

93    Rule 5.7 of the Rules provides:

5.7. When the Certification Trade Mark is applied to Retail Packaging for Basmati Rice, the Certification Trade Mark shall be applied to the exterior of the Retail Packaging so that it is clearly visible to purchasers/consumers. Also, on the exterior of the packaging shall appear:

(a) the Licensee’s User Licence Number or the corporate name of the licensee; and

(b) the statement “BASMATI is a Certification Trade Mark of the Agricultural and Processed Food Products Export Development Authority, India” or such other comparable language that is expressly approved by the Licensor;

(c) the words “Product of India”, displayed prominently.

94    APEDA submits that as a result of the rules, the “BASMATI certification mark would always be used in a manner that indicates to consumers that BASMATI is a certification mark of APEDA and that the certified rice emanates from India”. It says this provides important context for how the mark, if registered, would be recorded on the Trade Marks Register and used in trade in Australia. It says this supports the proposition that the Basmati mark is inherently adapted to distinguish.

95    APEDA says further, and relatedly, that in assessing the test under s 177, the Court must read it in light of s 171, which provides that the use of the certification trade mark can only be in accordance with the rules governing the use of the certification trade mark.

96    APEDA draws support from Effem Foods Pty Ltd v Marks & Spencer plc (1999) 47 IPR 213 at 221 (V Zars) where there was a condition of registration that the mark was to be used in close proximity with the applicant’s registered trade marks, and the Registrar found that to be relevant to assessing capacity to distinguish. APEDA also relies upon Goodman Fielder Pty Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9 at [220] (Burley J), citing Kenman Kandy at [47] (French J) for the proposition that the decision whether a mark is inherently adapted to distinguish “requires a practical evaluative judgment about the effect of the relevant mark in the real world”. APEDA says that evaluative judgment can take account of how the mark is permitted to be used, that is, in accordance with its rules and conditions. APEDA says further that if the Court considers those requirements need to be improved upon, the Court is entitled to impose conditions and limitations on any acceptance for registration pursuant to s 176(2) of the Act.

97    I accept that the rules accompanying the application, among other things, provide for retail packaging to include the statement that “BASMATI is a Certification Trade Mark of the Agricultural and Processed Food Products Export Development Authority, India”, and display prominently the words “Product of India”.

98    Section 171 of the Act relevantly provides that the registered owner of a mark has the exclusive rights to use, and allow others to use, the certification trade mark. However, it further provides that they may only do so “in accordance with the rules governing the use of the certification trade mark”. APEDA submits that because its use is wholly constrained by the rules it is appropriate to take account of those rules in assessing the tests under s 177. Similarly, s 176 entitles the Registrar, and therefore the Court, to accept the certification trade mark application “subject to conditions or limitations”. Those “limitations” are defined in the Act but are not relevant for present purposes. The word “conditions” is not defined. Again, APEDA says it is appropriate to take account of those conditions in assessing the tests under s 177.

99    There is no textual indicator in s 177, that s 171, or s 176(2), should be taken into account in assessing the inherently adapted test. That is, s 177 does not identify an obligation to take account of the rules or proposed conditions in the assessment of the inherently adapted test. The plain wording of s 177(2) concerns whether the “certification trade mark is capable of so distinguishing” and whether “the certification trade mark is inherently adapted so to distinguish those goods” or has “become adapted”. Those words direct attention to the certification mark itself and not how it is used in accordance with any rules or conditions.

100    Further, and relatedly, the approach to s 41 from Clark Equipment and Cantarella does not provide any express obligation to take account of the “conditions or limitations” that might apply to a standard trade mark in the assessment of “inherently adapted to distinguish”. In Clark Equipment Kitto J said, at 513:

That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

(Emphasis added.)

101    In that case, Kitto J seems to use the words “effects of registration” to refer to the effects of the mark being registered on “a person who is likely to want to use it, legitimately” (at 515) being manufacturers who may wish to use the mark (“Michigan”) in respect of goods in Australia. In the present case, the proposed condition is directed at the same end, being the interests of Pakistani producers of Basmati rice. Clark Equipment supports the proposition that such a condition is not to be taken into account, and that inherent adaptability is to be assessed apart from the conditions or limitations that may be imposed by the effects of registration.

102    While APEDA urges that regard should be had to the operation of the entire Part 16, I consider that s 177 read in context of Part 16 does not support the proposition that the s 177 test can incorporate consideration of the rules and any conditions. The rules are dealt with in Part 16 in the following ways: that the certification trade mark can only be used in accordance with the rules governing the use (s 171); that an approved user has a right to use the certification mark in accordance with the rules governing the use (s 172); the requirement to file a copy of the rules with the Trade Marks office (s 173(1)); and what the rules must specify (ss 173(2)-(4)); that the Commission must give a certificate if satisfied of certain matters in relation to the rules (s 175(2)); the variation of rules (ss 178 and 182); the Registrar’s obligation to publish the rules (s 179) and a court’s power to rectify a register if the rules governing the use of the certification trade mark are detrimental to the public (s 181(2)(b)). These sections demonstrate that where the rules are intended to be dealt with in the Part, the word “rules” is used. This points away from implying the operation of the rules into the assessment of the “additional ground” in s 177. The word “conditions” is only used in s 176(2) to state that the Registrar may accept the application subject to conditions or limitations. This is specifically in the context of the Registrar’s powers of “acceptance or rejection of application” in s 176. There is no suggestion in the text, context or purpose of the Part that the tests in s 177(2) in relation to whether the certification trade mark is capable of so distinguishing takes into account the proposed condition, or rules.

103    Having regard to those matters, and in particular the words of s 177, I consider that the certification mark, being the word “BASMATI”, needs to be inherently adapted in and of itself. This necessarily requires an examination of the ordinary meaning of the mark and the relevant evidence before the Court. The rules and proposed conditions which may govern its usage do not inform the s 177(2)(a) test.

104    While the effect of the proposed condition would be to provide other traders who use the word Basmati in connection with rice originating from Pakistan with a defence to infringement proceedings under s 122(1)(g) of the Act, and this does not change whether the requirements of s 177 have been met.

105    As for Effem, APEDA accepts that the decision is not binding on this Court, and I have some doubts about its correctness. However, the Registrar accepts that there are “some very exceptional cases” where the presence of a condition has been held to change the balance of registrability, I address whether this case could be such an exceptional case below.

106    I also separately consider below whether this is a case where it is appropriate for the Court to impose its own conditions or limitations if the Court considers that those proposed by APEDA are inadequate.

Inherently adapted so to distinguish – s 177(2)(a)

107    As discussed above the approach to standard trade marks under s 41 provides some assistance. With due acknowledgement, and caution, that s 177 requires the assessment of inherent adaptation to distinguish goods or services certified by APEDA from goods not so certified, I consider the “ordinary signification” of the word, and “whether other traders might legitimately need to use the word in respect of their goods”.

The ordinary signification of basmati

108    In Republic of Peru, Burley J stated that the relevant meaning for the purposes of the “ordinary signification” test is to be understood from the perspective of ordinary persons in Australia who will purchase, consume or trade in the goods: at [83]. In that case, the meaning to the ordinary consumer was contested as a matter of fact. His Honour focussed on how the ordinary meaning of the word is likely to be perceived and understood by the ordinary consumer, with regard to the evidence placed before the Court: at [84], [90]-[91], [106]-[135].

109    I apply the same approach in assessing ordinary signification in the present case.

110    The agreed facts make clear that Basmati rice is grown in both India and Pakistan. The Basmati Growing Area is at the foothills of the Himalayas and forms part of the Indo-Gangetic plains. That area covers parts of both India and Pakistan.

111    APEDA says that the name BASMATI is inherently capable of distinguishing the goods certified by APEDA from goods not so certified, pointing to the facts that the name BASMATI:

(1)    is not a place name;

(2)    is not a native English word with any relevant generic meaning;

(3)    is not inherently descriptive of rice (in contrast with, for example, words like “white”, “brown” or “long grain”); and

(4)    is not a laudatory word which might itself be incapable of being distinctive.

112    APEDA also says that the evidence shows that amongst Australian consumers, there is a strong association between the name Basmati and the Indian rice that has been promoted under that name.

113    The Registrar submits 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. In support of this conclusion, the Registrar points to aspects of the survey evidence, as well as what it says are “substantial” volumes of Basmati rice from Pakistan sold in Australia, and that there are repeated references to Pakistan as a place of origin of Basmati rice in publications published in Australia and online. That evidence is addressed below.

114    The Registrar says the word “Basmati” is not inherently adapted to distinguish rice certified by or on behalf of APEDA from rice that is not so certified. It says the word “Basmati”, in contrast to words such as “Indian Basmati”, “India Basmati” or “Basmati India”, contains no express indication that it refers only to rice that has been certified by APEDA, rather it refers to any rice of the kind that is commonly described as Basmati which includes rice from Pakistan that has not been certified by APEDA. The Registrar submits that there is no evidence that the inherent meaning of the word, as understood by those concerned with rice in Australia, is of a type of rice that has been certified by APEDA as having particular characteristics. Rather, it is of a type of rice that has those characteristics (or some of those characteristics), whether certified by or on behalf of APEDA or not.

Evidence of sales

115    APEDA submits that Republic of Peru indicates that the “most probative evidence” as to ordinary signification is evidence of activity in the marketplace. It says this in contrast to dictionary entries and reference texts, which it submits are “likely to be of limited probative value”. It submits that, in applying Republic of Peru to the present case, “the best guide as to the ordinary signification of BASMATI is what the evidence reveals about the circumstances as at the priority date”, and that the evidence shows a vast and long-standing trade of Basmati rice from India. APEDA says that the statement of agreed facts demonstrates sales to Australia at the export level of Basmati rice from India totalling about $336 million USD during the period from 1987 to 2018, and that in contrast the Registrar’s evidence showed sales in Australia at retail level of Basmati rice from Pakistan totalling approximately $62 million AUD, and that “the evidence is that the sales in Australia of BASMATI rice from India are vastly greater than the sales in Australia of BASMATI rice from Pakistan”. It says the position in the present case is “thus similar to the [Republic of Peru], where the evidence showed Peruvian Pisco having much greater sales”.

116    While the evidence establishes that substantial amounts of Basmati rice have been exported from India to Australia, being an amount of over 306,095 metric tonnes at a value of around $380 million USD from the period 1988-2019, the evidence also establishes that substantial volumes of Basmati rice from Pakistan are sold in Australia. For example, in 2018 alone, in respect of only the 1kg variety of Basmati rice distributed by Riviana Foods (which is a “product of Pakistan”), 499,516 units of that product were sold by Coles (a value of $2,196,025.70 AUD). In 2017, 465,079 units were sold (a value of $1,982,026.18 AUD), and in 2016, 473,447 units were sold ($1,985,073.99 AUD). In 2018, 666,574 units of “Maharajah’s Choice Basmati Rice 5kg” (a value of $6,390,019.65 AUD) were sold by Coles. There is further data from Coles before me in respect of other brands of Basmati rice from Pakistan sold in Australia. That volume of sales is properly described as “substantial”.

117    I do not accept that the evidence of sales establishes the ordinary signification contended for by APEDA.

118    First, I do not consider that describing sales data as the “most probative” evidence is an accurate statement of principle emerging from Republic of Peru. As noted above, his Honour focussed on the meaning of the word “pisco” as it is understood from the perspective of the ordinary persons in Australia concerned with alcoholic beverages, being people who will purchase, consume or trade in such goods: [83]. His Honour focussed on the evidence upon which the parties relied: [91]. His Honour considered the evidence as a whole, including weaknesses in the particular dictionary and specialist text evidence before his Honour in that case, the “scant” evidence before his Honour of Pisco imported from Chile that arrived in Australia, the modest extent of promotional activities of PISCO in Australia by the Republic of Peru, and the volume of Peruvian PISCO imported into Australia in the 14 years prior to the priority date being about 650,000 bottles. Properly understood, Republic of Peru does not support the principle that sales data is the “most probative”.

119    Second, I do not accept the submission that the sales volume evidence of Indian Basmati rice as compared to Pakistani Basmati rice in the present case is similar to the sales volume of Peruvian PISCO to Chilean Pisco. In Republic of Peru, the evidence was that the total exports of pisco from Peru to Australia from 2005 to 2019 was 156 tonnes: at [113]. This is contrasted with sales figures that showed 17,000 bottles sold of Chilean Pisco imported or sold by Dan Murphy’s between 2014 and 2019 (at [127]), and sales figures between August 2019 and November 2023 of about 2,500 bottles of certain brands of Chilean PISCO from Valore Cellars: at [130]. The first problem with this submission is it is not explained how APEDA calculated the $62 million sales figure for Basmati rice from Pakistan. It is unclear if this takes into account both the Coles and Metcash sales data which is in evidence before the Court. The second problem is that even if that $62 million figure was to be accepted, I am not satisfied that the analogy with the difference in Republic of Peru between Peruvian pisco and Chilean pisco is appropriate. In Republic of Peru that discrepancy was much greater than in the present case. However, I am still satisfied on the evidence before me that the amount of Pakistani Basmati rice sold in Australia can be fairly described as substantial. Third, and most importantly, there is no submission advanced by the Registrar that the evidence of sales of Basmati rice from Pakistan filed with the Court is exhaustive. The submission is that the precise volumes do not matter, and that the evidence shows that a “considerable” volume of Basmati rice from Pakistan was sold. I accept that submission.

Labelling

120    It is uncontroversial that food sold in Australia must be labelled with its place of origin. The evidence demonstrated that the Basmati rice sold in Australia, as explained above, was separately identified as being from India or Pakistan.

Cooking literature, dictionaries and screenshots

121    Mr Richards, an IP Australia hearing officer, attended the National Library of Australia and searched its catalogue for terms including “basmati” and “rice”. His affidavit annexes extracts of material obtained through the National Library catalogue, including from cookbooks, dictionaries and the Oxford Companion to Food. Mr Richards extracts Margaret Fulton’s Encyclopedia of Food and Cookery, 2013 edition, in which the author describes varieties of rice including “Basmati rice from Pakistan is a superb, light-textured long-grain rice, with a wonderful aromatic flavour. It is expensive, but worth it for dishes like Indian ghee rice, pilaf, pilau and Biryani.” While Donna Hay’s Simple Essentials Pasta, Rice & Noodles, 2008 edition, provides, under the heading “long-grain rice”, “Thai, or jasmine, rice has a delicate floral flavour, whereas Indian basmati is more aromatic”. The Oxford Companion to Food, third edition 2014, has an extensive entry under “rice”. It describes basmati as “the famous aromatic rice of Pakistan and northern India which is prized for its long, slender grains and its flavour, sometimes described as ‘nutty’”. It also describes the different systems of classification adopted for rice, including by botanical variety, by country or region, by size/shape, by stickiness or by a combination of size/shape and stickiness. On country or region, it describes the use of that classification as used “not as often as one might suppose, since what used to be geographical terms have tended to be transferred out of their original environment”. The annexed Oxford English Dictionary, second edition 1989, defines “basmati rice” as a “superior variety of Indian rice characteristically light and fragrant when cooked”.

122    APEDA submits that the Republic of Peru decision indicates that dictionary entries “need to be treated with care and are likely to have limited probative value”, and “reference texts (particularly those published elsewhere) are likely to be of limited probative value, because of uncertainty about the basis for their contents and the extent to which they reflect the ordinary signification of a word in Australia”. As discussed above, in Republic of Peru Burley J examined the evidence before him as a whole. The deficiencies his Honour identified in that case in relation to dictionary evidence and specialist text evidence were based on the evidence before him. His Honour said that “on the particular facts of this case, in my view the dictionary definitions are insufficient themselves to establish that usage” of how an ordinary consumer in Australia would understand the word “pisco”: at [106] (emphasis added), and his Honour placed weight on the competing dictionary definitions present in that case: at [107]. As for the specialist texts, his Honour placed emphasis on the fact that the texts relied upon in that case were publications from outside of Australia, and that it was not at all apparent that the ordinary consumer would rely upon those texts: at [110].

123    In the present case, some of the specialist texts in evidence are from Australia and some are from outside of Australia. While greater weight may be placed on the Australian texts, that will also depend on the extent to which the international texts are used and accepted in Australia. It is possible that some international texts could be established and commonly relied upon in Australia. Oxford University Press reference publications, for example, are well established and utilised in Australia. As set out above, the Oxford Companion to Food, third edition 2014, describes Basmati as “the famous aromatic rice of Pakistan and northern India”. The extract of the Oxford English Dictionary, which was also included amongst Mr Richard’s material, describes basmati as an “Indian rice”.

124    The Registrar also pointed to the historical screenshots of various Australian websites selling Basmati rice products annexed to the addendum to the statement of agreed facts. Those screenshots date from 2004 to 2018. That material can fairly be described as demonstrating that during that period basmati rice was offered for sale from both India and Pakistan.

125    Taken as a whole, I consider this evidence of sales, labelling, cooking literature, dictionaries and screenshots, suggests that the ordinary consumer in Australia would understand that Basmati is of a type of rice that is grown in both India and Pakistan.

Survey and ordinary signification

126    Whilst APEDA’s survey evidence is discussed further below, in the context of its reliance on that evidence for the use of the word Basmati having become adapted so to distinguish, the Registrar draws attention to that evidence in support of a submission about ordinary signification. The Registrar contends that the ordinary signification of the word Basmati in Australia is any rice of the kind that is commonly described as Basmati, which includes rice from Pakistan that has not been certified by APEDA.

127    Mr Sergeant explains that the survey consisted of three questions. First, “what comes to mind when you hear the name basmati”? Second, “what more can you tell us about it”? Third, “do you know where basmati comes from”? In response to the first and second questions, Mr Sergeant deposes that 70.9 per cent of respondents’ answers fell within the description of an answer that was “only rice”. He also deposes that some of the 28 per cent that did not mention a product did not do so “because it was so obvious to them that Basmati is a rice as to pass unmentioned”. In response to the third question, Mr Sergeant deposes that 55.6 per cent of respondents’ answers fell within the description of “no place mentioned”. He says 29.8 per cent of answers could be described as “only India”, and 11.3 per cent as “India and elsewhere”. The Registrar complains that the 29.8 per cent is likely overstated because Mr Sergeant included within the category of “only India” tentative answers such as “India maybe?” or “Australia, India? No sure”, and also included within “Only India” responses to questions one or two, such as “typically used in Indian foods” even if the answer to question three, was “No idea”. I accept that criticism, although it is difficult to say whether it materially affected the percentages.

128    In any event, and most significantly, the clear majority of survey respondents did not know, or were unsure, where Basmati came from. Further, Mr Sergeant combines the “only India” answers with the “India and elsewhere” answers to depose that “over 41% mentioned India as a place of production”. He says that the next most frequently mentioned country is Pakistan with it mentioned in 9.9 per cent of answers. He concludes that while the association with India is stronger than Pakistan “it is not in dispute that Basmati is produced on both sides of the international border”.

129    Even accepting some of the shortcomings with surveys of this kind as explained below, I am not satisfied that those results demonstrate that ordinary persons in Australia who will purchase, consume or trade in Basmati rice establish the ordinary signification contended for by APEDA.

130    Based on all of those matters above, the agreed facts, the sales, the cooking literature, dictionaries, screenshots, and the survey, I accept 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.

131    For completeness, I note that APEDA submits that there is “no evidence which suggests that the mark BASMATl is a generic or widely used descriptor for rice. Rather, the evidence overwhelmingly shows that it is the name of a specific product that emanates from a defined growing area and that has specific characteristics attributable to its origin and cultivation”. However, even accepting those things, that does not overcome the obligation to reject the trade mark if it “is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified.” The recognition of a growing area, covering parts of both India and Pakistan, does not distinguish the rice certified by APEDA from that not so certified. Likewise, the recognition of the specific characteristics common to Basmati from India and Pakistan does not distinguish the rice certified by APEDA from that not so certified. Nothing in those submissions establish how the word mark functions as a badge of certification by APEDA. Rather, it only establishes that Basmati is rice from a defined growing area with specific characteristics, and not that it distinguishes rice certified by APEDA from other rice not so certified, such as Basmati rice from Pakistan.

Might other traders legitimately need to use the word in respect of their goods?

132    I accept that the mark refers to rice of the kind that is commonly described as Basmati, and includes rice from Pakistan that has not been certified by APEDA. Accordingly I must accept that the mark is a term that other traders, without improper motives, might legitimately need to use in respect of their goods.

133    In light of the evidence in relation to ordinary signification, and that there are traders who might legitimately need to use the mark in respect of their goods, I consider that the BASMATI mark is not inherently adapted so to distinguish Basmati rice certified by APEDA from Basmati rice not so certified.

Do the rules and proposed conditions overcome the above deficiencies in s 177(2)(a)?

134    For completeness, and notwithstanding my conclusions above that I do not consider that the rules and proposed condition are part of the s 177(2)(a) test, I consider whether the rules and proposed condition could in any case change the balance of registrability pursuant to s 177(2)(a).

135    Even if the rules or proposed condition could change the balance of registrability in “very exceptional cases”, this is not such a case. Even if the certification mark is used in accordance with its rules and the proposed condition, the mark will still be used in conjunction with rice from Pakistan that is not certified by APEDA. It lacks the requisite capacity to distinguish Basmati rice certified by or on behalf of the APEDA from Basmati rice not so certified. In other words, even if the words “Product of India” are displayed prominently on the packaging, and there are words on the packaging specifying that it is a certification trade mark of APEDA, and a condition is imposed that registration of the certification trade mark does not entitle the owner to prevent the legitimate use of Basmati in Australia to denote rice originating from Pakistan, I consider that in light of the evidence above this would not affect how the ordinary Australian consumers would understand the word “basmati”. The 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.

Does the use or other circumstances mean the word has become adapted so to distinguish?

136    APEDA, as an alternative to inherently adapted in s 177(2)(a), relies on the trade mark having become, because of its “use or of any other circumstances”, adapted so to distinguish the goods certified pursuant to s 177(2)(b). I deal first with “use” and then “other circumstances”.

137    I accept, as the Registrar contends, that the assessment of “use” requires a factual investigation as to how the mark has been presented in the marketplace and whether, despite its inherent meaning, consumers have nevertheless come to recognise the mark as performing that distinguishing function. That is consistent with the approach taken in Republic of Peru.

138    APEDA points to what it calls the “extensive use in Australia over many decades” of the BASMATI mark prior to the priority date, and that the mark has developed “a very strong reputation and goodwill, such that it distinguishes BASMATI rice from India”. I deal with that evidence below.

139    The Registrar says there is no evidence that BASMATI has become adapted to distinguish as a result of use or other circumstances. She says that though significant sales of Basmati rice from India have occurred in Australia, there is no evidence that the word basmati has been used in the context of those sales to indicate the rice in question has been certified in any way, rather it has simply been used to describe the type of rice that is being sold. She also submits that reference to Basmati rice as a product that is grown in India does not demonstrate the use of the word basmati to indicate rice that has been certified by or on behalf of APEDA, and that this is particularly so when the word is also used in precisely the same way to refer to rice from Pakistan which has not been certified by or on behalf of APEDA. The Registrar further submits that the survey relied on by APEDA does not demonstrate that the word basmati has come to function as a “badge of certification” rather than a descriptor of a type of rice.

140    The Registrar submits that mere use of the mark on or in connection with the goods or services is unlikely to be sufficient to establish the requisite level of distinctiveness. Rather, it is necessary to show that consumers have been educated to regard the mark as an indicator that the goods or services in relation to which it is applied have been certified as having particular characteristics. The Registrar submits it is not enough simply to show that consumers recognise them as having those characteristics.

Use

141    The agreed facts detail that from 1988 to 2019, over 306,095 metric tonnes of Basmati rice have been exported to Australia from India and the value of that rice was around $380 million USD.

142    Mr Varma’s affidavit describes that Taj Foods has imported a range of Basmati rice from India into Australia and sold at the wholesale level “for the entire time I have been involved in the business”, that is from 2006 to 2024. Mr Varma also deposes that he believes Taj Foods had “imported Indian Basmati rice for many years prior to [him] joining the business”. He further deposes that the quantity of Basmati rice imported into Australia from India by Taj Foods has generally been increasing each year since Mr Varma began working at the company. He deposes that Taj Foods imported over 2500 tonnes in each year from 2010, climbing to over 3500 tonnes by 2018. Mr Varma deposes that Taj Foods sells its Basmati rice to a range of retailers and food businesses spread across all Australian states, and that the businesses include food stores, supermarkets, food manufacturers, restaurants and caterers. Mr Varma further deposes that all the Basmati rice imported from India by Taj Foods has been prominently labelled with the name “Basmati” and with India stated as being the country of origin of the product, which is generally written as “Product of India” or “Produce of India”.

143    As discussed at [127] above, the Ipsos survey results detail that 70.9% of survey respondents mentioned rice in association with the name Basmati. However, in response to the question “Do you know where Basmati rice comes from”, only at most 29.8% of respondents said “Only India”. A further 11.3% said “India and elsewhere”, 3.3% said “Elsewhere only”, and 55.6% did not mention a place. Mr Sergeant deposes that, once the approximately 29% of respondents who did not provide any evidence that they were aware that Basmati was a type of rice is excluded from the analysis, 52.9% of those who stated that Basmati is a rice believed that it comes from India.

144    I accept that significant sales of Basmati rice from India have occurred in Australia. In circumstances where the word “Basmati” is also used to refer to rice from Pakistan which has not been certified by or on behalf of APEDA, I do not accept that volume of sales alone demonstrates that the certification trade mark has become adapted so to distinguish.

145    As for the survey data, I make the following comments. First, the survey was conducted in April 2020 while the relevant priority date is in August 2018. Although I note that the Registrar does not complain that this matter invalidates the survey. Instead, putting to one side the other complaints made by the Registrar, the parties appeared to proceed on the basis that it is permissible to take into account survey evidence compiled after the priority date to the extent it supports an inference that the certification trade mark is inherently adapted to distinguish the goods or services at the priority date: see Austereo and the other cases at [67] above.

146    Second, and perhaps more importantly in this case, at its highest, the survey data may establish that consumers have an association between BASMATI and India. That data does not demonstrate that BASMATI functions as a certification trade mark, that is, it does not demonstrate that its use has meant that the word has become adapted so to distinguish: see, in the context of s 41, Apple Inc. v Registrar of Trade Marks [2014] FCA 1304; 227 FCR 511 at [223]-[230] (Yates J) and the cases cited there addressing the difference between that association and the function as a trade mark. The survey data is of more limited probative value for that reason. I accept the submission of the Registrar that the survey data relied on by APEDA does not prove that the public would rely on the term “Basmati” alone as an indicator that the goods have been certified by or on behalf of APEDA.

147    Third, even if the survey data had more probative value for the purposes of the s 177 (or s 41) enquiry, I still consider that the survey data in this case does not establish APEDA’s submissions. This is because, properly understood, the data does not identify strong associations between India and Basmati rice. The majority of survey respondents stated that they did not know or were unsure where Basmati rice came from, with a significant proportion of those who did identify a place nominating countries or locations other than India alone. This data, which shows that at most only 29.8% of respondents said “Only India” in response to the question “Do you know where Basmati rice comes from”, cannot strongly support a conclusion that consumers have come to recognise “Basmati” as performing a distinguishing function.

148    Finally, I have also had regard to the evidence from the literature described at [121]-[123] above. As discussed, that literature clearly includes references to Basmati as a rice from both India and Pakistan. Taken as a whole, that evidence cannot support a contention that the use of the word has become adapted so to distinguish.

149    I do not accept that use has meant the word has become adapted so to distinguish.

Other circumstances

150    APEDA contends that the nature of BASMATI “as a transnational geographical indication that has been used by Indian producers in good faith” constitutes the “other circumstances” by which the certification trade mark has become adapted so to distinguish.

151    APEDA says the nature of BASMATI is as a transnational geographical indication which spans the border of two countries, India and Pakistan. It says that geographical indications are a form of intellectual property with a lengthy international history, and says that the intellectual property is the “indication” and not the good which is identified by that indication. It points to Australia being a signatory to the TRIPS Agreement, which defines geographical indications as “indications which identify a good as originating in the territory of a Member, or a region or locality in the territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”: art 22.1. It points to Australia’s obligation under art 22.2 to provide legal means for interested parties to prevent “the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good”. It says that Australia has implemented its TRIPS Agreement obligations in part by the certification mark regime under the Act, and points to the definition of “geographical indication” in s 6 of the Act which mirrors the TRIPS Agreement definition. It relies on the evidence from Mr O’Connor about the concept, protection and examples of geographical indications.

152    The Registrar says that the status of BASMATI as a geographical indication is not relevant to the issues before the Court. She says it is a “distraction”, because the fact that it is possible for a geographical indication to meet the requirements of s 177 if consumers have come to understand it as an indicator that goods or services have been certified by a particular source as possessing particular characteristics, does not mean that the section applies any differently.

153    The Registrar submits that it follows from the legislative history of s 177 that the regime of registration of certification trade marks long preceded the recognition of geographical indications under TRIPS Agreement which was signed on 15 April 1994 and that the certification trade mark regime was not enacted as a way of implementing Australia’s obligations under the TRIPS Agreement. The Registrar submits that the TRIPS obligations do not provide a basis to expand the scope of s 177. She says that certification trade marks have long been a feature of Australian trade marks legislation, and much longer than Australia has been obliged to protect geographical indications under the TRIPS Agreement.

154    More specifically, the Registrar submits that APEDA’s reliance on the nature of BASMATI as a transnational geographical indication as constituting “other circumstances” that justify registration “misconstrue[s] the nature of the enquiry under s 177(2)(b)”. She says that the “other circumstances” in question must be such as to render the mark adapted to distinguish rice certified by or on behalf of APEDA from rice which is not so certified. She says further that whether or not BASMATI is recognised as a geographical indication in multiple jurisdictions has no bearing on that question, in circumstances where the mark is sought to be registered in respect of rice which has been certified under the regime of one jurisdiction alone.

155    I repeat that part of the history of Part 16 of the Act explained above. That is, that the legislative history of the registration of certification trade marks long preceded the recognition of geographical indications under the TRIPS Agreement. The certification trade mark regime cannot have been enacted as a way of implementing Australia’s obligations under the TRIPS Agreement. I accept the Registrar’s submission that the TRIPS Agreement obligations do not provide a principled basis to expand the scope of s 177 to ensure that a geographical indication not otherwise protected under Australian law falls within its terms.

156    However, that does not exclude the possibility of a transnational geographical indication satisfying the “other circumstances” provided for in s 177(2)(b). The difficulty faced by APEDA is that the “other circumstances” must establish that the certification trade mark has become adapted so to distinguish rice certified by or on behalf of APEDA from rice which is not so certified. 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.

157    For completeness, APEDA submits that the Republic of Peru decision confirms that “certification marks are a suitable mechanism for the protection of geographical indications under Australian law”, citing [77] of that decision. I consider that this submission overstates what Burley J said in Republic of Peru. At [77], his Honour quotes with apparent approval Shanahan DR, Australian Law of Trade Marks and Passing Off (2nd ed, Law Book, 1990). That passage reads:

The learned author then observed, in relation to geographical names, that such a name may well be registrable as a certification trade mark “if those who would have been entitled to use the name before registration will continue to have access to its use as a registered certification mark” (at p 227). As further explained (at p 227):

… That might be so where the use of the name is already restricted by regulation in the country of origin of the product, as in the case of the appellations d’origine controlee of France and the similarly regulated wine appellations of countries such as Germany and Italy. Provided that such a name has not become generic in Australia (in which case registration would interfere with description of the product), there appears no reason why registration should not be granted in Part C, and wine appellations have indeed been registered on this basis. …

(Footnotes omitted.)

158    That passage at its highest does not go beyond citing with apparent approval the proposition that geographical names may be registrable as a certification trade mark in certain circumstances. It does not adequately support the point APEDA says it does. The passage does not establish that geographical indications constitute “other circumstances” under s 177(2)(b) in this case.

159    I am not satisfied, in the circumstances before me, that the nature of BASMATI as a transnational geographical indication constitutes “other circumstances” for s 177(2)(b).

Do the rules and proposed condition overcome the above deficiencies in s 177(2)(b)?

160    For completeness, to the extent that the parties advanced an argument that the rules and proposed condition are relevant to whether the word has become adapted so to distinguish because of use or other circumstances, I do not accept this argument. I am not satisfied that the rules and proposed condition are capable of supporting the proposition that the word has, by its use or other circumstances, become adapted.

161    In any event, I accept, as the Registrar contends that it is difficult to see how BASMATI could acquire the capacity to distinguish in circumstances where the word is used in respect of rice which is not certified by APEDA.

The approach in Republic of Peru applied in this case

162    While in Republic of Peru Burley J found that PISCO is registrable as a certification trade mark under s 177, and in the present case I have found that BASMATI is not registrable as a certification trade mark, nothing in this decision should be read as inconsistent with the approach taken in Republic of Peru to the construction and application of s 177.

163    In Republic of Peru, Burley J utilised the approach to inherently adapted under s 41, and assessed the evidence before the Court as a whole. On the basis of that evidence his Honour considered it may be concluded more likely than not that the ordinary consumer would consider that PISCO in relation to alcoholic beverages is indicative of a location or region of origin in Peru from where the beverage is made, rather than that the beverages comes from either Peru or Chile: at [135]. His Honour relied upon the evidence discussed at [118] above, and placed weight on the fact that the usage is likely to have educated ordinary consumers as to the connection between Peru and the word PISCO. That evidence included PISCO’s association with the town and region in Peru close to vineyards where grapes used to make pisco are grown, and its other history and association with Peru.

164    Here, unlike PISCO, the BASMATI mark is not a geographical name for a specific place from which the product in question is produced, rather it is the name of a type of rice associated with a specific growing area in India and Pakistan. The survey evidence, sales evidence, literature and other evidence before the Court demonstrates that the ordinary signification of the word “Basmati” in Australia is of a type of rice, that is grown in both India and Pakistan. I am satisfied that evidence also demonstrates that BASMATI has not become adapted so to distinguish goods certified by APEDA through use or other circumstances. I accept that the BASMATI mark refers to rice of the kind commonly described as Basmati that includes rice from Pakistan that has not been certified by APEDA, and therefore other traders might legitimately need to use it in respect of their goods. This is all in contrast to the evidence in Republic of Peru and requires a different finding.

165    The evidence before me, taken as a whole, does not allow for registration for BASMATI under either ss 177(2)(a) or (b). I have reached a different outcome to Republic of Peru in this case by applying the same principles and the same approach to s 177, and because of the different set of circumstances and the different evidence before the Court.

166    For completeness, APEDA raised in its supplementary submissions addressing Republic of Peru that the issue before the Court is acceptance for registration. It says if accepted, the BASMATI mark would then be advertised for registration and an opposition may be filed by any interested party. It says that in that phase, further evidence may be advanced, warranting reconsideration. I understand this submission to address concerns including that other traders in Basmati rice, such as from Pakistan, may be disadvantaged by the registration. This submission does not advance any argument under the s 177 tests. It does not assist with determining the issues the Court is required to decide. I address it in further detail below.

Interests of Pakistani traders

167    For completeness, I note that APEDA submits that the legitimate interests of Pakistani traders will not be compromised if the certification trade mark application is registered. APEDA says the Act provides mechanisms including through ss 44(3) and 122(1)(b) to balance and accommodate competing bodies of rights, with the effect that both legitimate rights-holders, being both Pakistani and Indian traders of Basmati rice, may obtain registration. APEDA further says that third parties, including relevant bodies in Pakistan, have the ability to seek to ensure that APEDA’s application for the certification mark BASMATI is only registered subject to conditions which do not jeopardise the interests of producers in Pakistan.

168    The Registrar submits, to avoid any doubt, that she does not have a particular desire to protect the interests of Pakistani traders or the Pakistani Government and is only concerned with ensuring that marks are registered only if they satisfy the requirements for registration laid down by the legislation.

169    I am satisfied that the interests of Pakistani traders do not bear directly on the s 177 test, which directs attention to whether the certification trade mark is capable of so distinguishing.

The Court’s ability and willingness to impose or amend conditions

170    In oral submissions APEDA said further that the Court “has the red pen”. From that I understand it to submit that the Court could amend the proposed condition or impose other conditions or limitations it considers appropriate pursuant to s 176(2) of the Act.

171    The Registrar says that it is not the role of the Court to redraft the rules, or conditions, to make the mark registrable, and that course would also expose a risk that the mark becomes an entirely different mark. The Registrar says the mark needs to stand on its “own two feet”, and she says this mark plainly does not.

172    I treat this submission as discrete from the submission considered above about whether the rules and proposed condition should form part of the assessment of inherently adapted to distinguish. However, for the same reasons expressed at [92]-[106] and [134]-[135], I am not satisfied that the circumstances of this case require any conditions or limitations imposed by the Court to be taken into account in the assessments under s 177(2). Further, and in any event, on the material before me the concerns that I have expressed could not be readily overcome by a condition or limitation imposed by the Court. The Court will not impose or redraft conditions or limitations in those circumstances.

Disposition

173    For all of those reasons the appeal is dismissed. APEDA should pay the Registrar’s costs of the appeal.

Associate:

Dated:    11 August 2026