Basmati is a familiar name on supermarket shelves, but that familiarity does not necessarily mean the word can function as a certification trade mark. That was the issue before the Federal Court in Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India v Registrar of Trade Marks [2026] FCA 1125.
India’s Agricultural and Processed Food Products Export Development Authority, commonly known as APEDA, sought to register BASMATI as a certification trade mark in Australia. APEDA is responsible for regulating and protecting the Indian geographical indication for Basmati rice and argued that the word could distinguish rice meeting its certification requirements.
There was, however, a significant difficulty. Basmati rice is not produced only in India. The traditional Basmati growing region extends across parts of northern India and Pakistan, and rice from both countries has been sold in Australia under the Basmati name for many years.
That issue ultimately proved decisive. The Federal Court found that Australian consumers were likely to understand Basmati as the name of a particular type of rice grown in India and Pakistan, rather than as a sign that the rice had been certified by APEDA. The Court therefore upheld the refusal of the word mark and dismissed APEDA’s appeal.
The decision provides important guidance on how section 177 of the Trade Marks Act 1995 (Cth) applies to certification trade marks, particularly where a geographical indication is associated with a region that crosses national borders. It also shows why recognition of a geographical indication, even one with a long history and substantial reputation, does not by itself establish that the name can perform the distinguishing function required of an Australian certification trade mark.
Background of the dispute
APEDA is an Indian statutory authority responsible for protecting and regulating the Indian geographical indication BASMATI, including internationally.
BASMATI has been registered as a geographical indication in India since 2008. Under the Indian regulatory system, approved Basmati rice varieties must satisfy prescribed standards relating to matters such as grain characteristics and aroma. Production is also subject to requirements concerning cultivation, harvesting and storage.
The geographical region traditionally associated with Basmati rice, however, is not confined to India. The Basmati growing area extends across the Indo-Gangetic plains below the Himalayan foothills and includes parts of both northern India and Pakistan.
In February 2019, APEDA filed two Australian certification trade mark applications. One was for the word BASMATI alone. The other was for a device mark incorporating the word BASMATI.
The Trade Marks Office initially declined to accept both applications.
Following a hearing, the Registrar’s delegate maintained the refusal of the BASMATI word mark but accepted the device mark.
The delegate considered that other traders had a legitimate need to use the word Basmati in relation to rice, including rice that had not been certified by APEDA. The delegate was also not satisfied that use of BASMATI in Australia had caused the word itself to distinguish APEDA-certified rice from other Basmati rice.
APEDA appealed the refusal of the word mark to the Federal Court.
The appeal was heard de novo. This meant that the Court was required to determine the application on its merits based on the evidence before it, rather than simply deciding whether the delegate had made an error.
The certification trade mark issue
A certification trade mark performs a different function from an ordinary trade mark.
An ordinary trade mark generally distinguishes the goods or services of one trader from those of others. A certification trade mark instead indicates that goods or services have been certified as meeting particular requirements relating to matters such as quality, origin, material or method of manufacture.
Section 177 of the Trade Marks Act provides an additional ground for rejecting a certification trade mark.
The application must be rejected if the mark is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services that have not been certified.
In assessing this question, the Registrar must consider the extent to which the certification mark is inherently adapted to perform that distinguishing function and the extent to which, because of its use or other circumstances, it has become adapted to do so.
The issue was therefore not simply whether Basmati was a recognised product or geographical indication.
The question was whether the word BASMATI, when used by itself, could distinguish rice certified by APEDA from rice that had not been certified by APEDA.
That distinction ultimately proved decisive.
Presumption of registrability
An important preliminary issue concerned the presumption of registrability.
For ordinary trade marks, Australian law proceeds on the basis that an application should be accepted unless the Registrar is satisfied that there is a proper ground for rejecting it.
The Registrar had previously argued that the same presumption did not necessarily apply to certification trade marks because of differences between the statutory provisions governing ordinary and certification marks.
By the time the BASMATI appeal was determined, however, the Federal Court had considered the issue in Republic of Peru (Peruvian State) v Registrar of Trade Marks [2026] FCA 791, concerning an application to register PISCO as a certification trade mark.
Dowling J agreed with the approach taken in that case and held that the presumption of registrability also applies to certification trade marks.
Accordingly, if the question of registrability had remained genuinely in doubt, the application should have been accepted.
That principle nevertheless did not assist APEDA because the Court was satisfied on the evidence that BASMATI lacked the required capacity to distinguish.
What does BASMATI mean to Australian consumers?
The central part of the case concerned the ordinary signification of the word Basmati in Australia.
The Court applied principles familiar from ordinary trade mark cases such as Clark Equipment Co v Registrar of Trade Marks and Cantarella Bros Pty Ltd v Modena Trading Pty Ltd.
The first question was what the word ordinarily meant to Australian consumers concerned with the relevant goods.
The second was whether other traders, acting legitimately and without improper motives, might need to use that word in relation to their own goods.
APEDA argued that BASMATI was capable of distinguishing its certified goods because the word was not a geographical place name, was not an ordinary English descriptive term and was not simply a description such as “white”, “brown” or “long grain” rice.
APEDA also relied on the longstanding sale of Indian Basmati rice in Australia and argued that Australian consumers had developed a strong association between Basmati and India.
The Registrar took a different position.
She argued that an ordinary Australian consumer would understand Basmati as identifying a particular type of rice grown in more than one location, including both India and Pakistan.
The Court accepted the Registrar’s position.
Sales of Indian and Pakistani Basmati
APEDA relied heavily on the scale and history of Indian Basmati exports to Australia.
The evidence showed that more than 306,000 metric tonnes of Basmati rice had been exported from India to Australia between 1988 and 2019, with a value of approximately US$380 million.
Those figures demonstrated a substantial and longstanding trade.
They did not, however, tell the whole story.
There was also evidence of significant sales of Pakistani Basmati rice in Australia. The Court referred, for example, to hundreds of thousands of units of Pakistani Basmati products sold through Coles in individual years before the relevant priority date.
The Court considered those sales substantial.
Importantly, Pakistani Basmati was marketed using the same word, Basmati.
This meant that consumers were encountering the word in connection with rice from both India and Pakistan.
The Court was therefore not persuaded that the greater volume of Indian Basmati sales established that the ordinary Australian meaning of Basmati was limited to Indian rice or, more particularly, rice certified by APEDA.
Dictionaries, cookbooks and marketplace evidence
The Court also examined cookbooks, dictionaries, reference works and historical Australian website materials.
The evidence was not entirely uniform.
Some sources referred to Basmati as Indian rice. Others described it as rice originating from both Pakistan and northern India.
The Oxford Companion to Food, for example, described Basmati as the famous aromatic rice of Pakistan and northern India.
Historical website material also showed Basmati rice from both India and Pakistan being offered for sale in Australia before the 2018 priority date.
Dowling J considered the evidence as a whole rather than treating any particular dictionary or reference work as determinative.
Taken together with the sales and labelling evidence, the material supported the conclusion that an Australian consumer would understand Basmati as a type of rice grown in both India and Pakistan.
The consumer survey
APEDA also relied on an Ipsos survey conducted in 2020.
The survey asked participants what came to mind when they heard the word Basmati, what more they could say about it and whether they knew where Basmati rice came from.
Around 70.9 per cent of responses to the first questions referred only to rice.
When participants were asked where Basmati came from, however, the results were less favourable to APEDA.
At most, 29.8 per cent identified only India. A further 11.3 per cent referred to India and elsewhere, while the majority did not identify a place.
For the Court, this evidence did not establish that Australian consumers understood BASMATI as indicating rice certified by APEDA.
At best, it suggested some association between Basmati and India.
That was not the same as showing that the word performed a certification function.
This distinction was important. Consumers may associate a product with a country, characteristic or reputation without understanding the word used for that product as indicating that it has been certified by a particular organisation.
The survey therefore did not establish that BASMATI had acquired the necessary capacity to distinguish APEDA-certified rice.
Legitimate use by other traders
Once the Court determined the ordinary signification of Basmati, the position concerning other traders followed relatively directly.
Basmati was understood as a type of rice that included rice grown in Pakistan.
Pakistani producers and traders therefore had a legitimate commercial reason to use the word Basmati to describe their own rice.
Their use was not dependent on APEDA certification.
The Court consequently found that BASMATI was not inherently adapted to distinguish rice certified by APEDA from rice that had not been certified by it.
The word identified the product, but it did not identify APEDA’s certification of the product.
That difference lies at the heart of the judgment.
Must a certification mark say that it is certified?
The Court nevertheless rejected one potentially broader argument advanced by the Registrar.
The Registrar submitted that it may be difficult for a certification mark to distinguish certified goods unless the mark itself indicates that the goods have been certified, for example through words such as “approved”, “accredited” or “certified”.
Dowling J did not accept that this was a legal requirement.
A certification trade mark does not have to state on its face that it is a certification mark. Nor must words expressly referring to certification necessarily appear within the mark.
Whether the mark is capable of distinguishing certified goods remains a question to be determined in the circumstances of each case.
The absence of certification language within BASMATI was therefore not, by itself, fatal to APEDA’s application.
The problem was that BASMATI, considered in its own right and against the marketplace evidence, did not distinguish APEDA-certified rice from other Basmati rice.
Could APEDA’s certification rules solve the problem?
APEDA sought to address the distinction between Indian and Pakistani Basmati through the rules governing use of the proposed certification mark.
Those rules required packaging bearing the certification mark to identify BASMATI as a certification trade mark of APEDA and to prominently display the words “Product of India”.
APEDA also proposed a condition designed to make clear that registration would not prevent legitimate use of Basmati in Australia for rice originating from Pakistan.
These were significant safeguards from a practical perspective.
The Court nevertheless held that they did not determine whether the word BASMATI itself satisfied section 177.
Dowling J considered that the statutory enquiry focuses on the certification mark itself. The mark must have the required distinguishing capacity and cannot ordinarily acquire that capacity merely because rules or conditions regulate how it will be used following registration.
Even if the words “Product of India” appeared prominently on packaging and Pakistani traders retained the ability to use Basmati, an Australian consumer would still understand the word Basmati itself as referring to the type of rice grown in India and Pakistan.
The additional wording might distinguish the particular packaged product, but it did not transform BASMATI itself into a mark capable of distinguishing APEDA-certified rice.
BASMATI as a geographical indication
APEDA also placed considerable emphasis on the status of BASMATI as a geographical indication.
It argued that Basmati was a transnational geographical indication associated with a defined growing region crossing the India-Pakistan border, and that this should constitute an “other circumstance” supporting registration under section 177(2)(b).
The Court accepted that a transnational geographical indication could, in an appropriate case, fall within the “other circumstances” considered under section 177.
However, being recognised as a geographical indication did not automatically make a sign registrable as an Australian certification trade mark.
The relevant circumstance still had to show that the mark had become capable of distinguishing goods certified by the applicant from goods that were not so certified.
That requirement caused difficulty for APEDA.
BASMATI might describe rice associated with a particular geographical region and particular qualities, but that region crossed the international border.
APEDA’s certification system applied to the Indian side.
Accordingly, the geographical significance of Basmati did not distinguish APEDA-certified rice from Pakistani Basmati that also originated within the broader Basmati growing region.
The Court also rejected the suggestion that Australia’s obligations under the TRIPS Agreement justified expanding the operation of section 177. The Australian certification trade mark regime predated the international framework for geographical indications under TRIPS and had to be applied according to its own statutory requirements.
Why did PISCO succeed but BASMATI failed?
The decision is particularly interesting when read alongside Republic of Peru v Registrar of Trade Marks [2026] FCA 791, decided only weeks earlier.
In that case, the Federal Court held that PISCO could be registered as a certification trade mark.
APEDA relied on the PISCO decision in support of BASMATI.
Dowling J emphasised that the different outcomes did not reflect different legal tests.
The same section 177 principles applied in both cases.
The difference was the evidence.
In the PISCO case, the evidence supported the conclusion that Australian consumers were likely to understand PISCO as indicating a geographical origin in Peru. The evidence of competing Chilean Pisco in Australia was also considerably more limited.
Basmati presented a different factual situation.
It was not the name of a particular town or place. It was the name of a type of rice associated with a growing region extending through both India and Pakistan.
There was also substantial evidence that Pakistani Basmati had been sold in Australia using the word Basmati.
The Court therefore found that Australian consumers would understand BASMATI as identifying the type of rice rather than APEDA’s certification of it.
The two decisions demonstrate how strongly certification mark cases can turn on marketplace evidence and consumer understanding rather than the international status of the designation alone.
The Federal Court’s decision
The Court concluded that BASMATI satisfied neither route available under section 177.
First, it was not inherently adapted to distinguish rice certified by APEDA because Basmati was ordinarily understood as a type of rice grown in India and Pakistan, and other traders had a legitimate reason to use that term.
Secondly, the evidence of extensive sales, consumer recognition and geographical indication status did not establish that BASMATI had acquired a separate certification significance in Australia.
The proposed certification rules and conditions could not cure those difficulties.
Dowling J also declined to formulate new conditions or rewrite APEDA’s proposed conditions to make the mark registrable. The concerns went to the capacity of the word itself to perform the required distinguishing function and could not readily be overcome through conditions imposed by the Court.
The appeal was therefore dismissed, with APEDA ordered to pay the Registrar’s costs.
Commercial significance
The decision provides several important lessons for organisations seeking to protect geographical indications through Australia’s certification trade mark system.
First, recognition as a geographical indication does not automatically establish registrability as a certification trade mark. The applicant must still satisfy the requirements of section 177 and show that the proposed mark is capable of distinguishing goods certified under its particular system from goods that are not so certified.
Secondly, geographical indications that cross national borders can present particular difficulties. If legitimate producers in another country use the same geographical or product designation but fall outside the applicant’s certification regime, the designation may struggle to distinguish the applicant’s certified goods.
Thirdly, extensive sales and reputation are not enough on their own. Evidence that consumers recognise a word, associate it with a particular country or understand the characteristics of a product does not necessarily establish that the word functions as a certification mark. Applicants need evidence showing that consumers understand the sign as indicating compliance with a particular certification system or standard.
Fourthly, certification rules and labelling requirements remain important, but they cannot necessarily rescue a mark that lacks distinguishing capacity in its own right. Requiring additional wording such as “Product of India” may help consumers understand the origin of a particular product, but the underlying mark must still satisfy section 177.
Finally, the contrast between BASMATI and PISCO shows that geographical indication cases will be highly fact dependent. The history of the designation, the geographical area concerned, use by competing producers, Australian sales, labelling, consumer perceptions and the way the term is used in ordinary trade may all affect the outcome.
For geographical indication owners considering protection in Australia, the case highlights the importance of assessing not only whether a designation has international recognition, but also what the relevant word actually means to Australian consumers and traders.
This case demonstrates that a valuable and internationally recognised geographical indication may still fall short of the distinctiveness required for registration as an Australian certification trade mark.
The critical question remains whether the mark distinguishes goods certified under the applicant’s scheme from goods that are not. For BASMATI, the Federal Court concluded that it did not.
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