The JASMATI trademark affair

TITLE: The JASMATI Trademark Affair AUTHOR: Muriel Lightbourne, French Patent Office, Bangkok PUBLICATION: IP Asia DATE: February 1999 SOURCE: Asia Law & Practice, Hong Kong

THAILAND: THE JASMATI TRADEMARK AFFAIR

by Muriel Lightbourne French Patent Office Bangkok [i]

Although it appeared only six years ago in the United States of America, the JASMATI trademark has already earned a wide reputation, judging by the number of websites dedicated to this matter. The height of the crisis seems to be over, but the issue is not settled as yet.

It might help to first recall that a patent application was filed with the US Patent and Trademark Office (USPTO) in 1990 by Dogeut-Dishman Rice Company for socalled "Jasmine 85", a jasmine rice strain derived from the rice line Khao Kao Dok Mali 105 (KDML 105) contributed by Thailand to the International Rice Research Institute germplasm three decades ago. At the same time, a federal trademark application was filed in July 1990 by the same company and then later withdrawn (for lack of submission of a statement of use) on March 17 1992. The name "Jasmine" has also been used since 1997 to trade rice by a company incorporated in Arkansas, but no application was filed with respect to this use.

The JASMATI trademark was first applied for by Ricetec of Texas in May 1990 and abandoned for defective statement of use on September 9 1991. Ricetec then filed a second application for a federal trademark for JASMATI on May 25 1993, which was registered on November 11 1993.

The continuing controversy only began in early 1998, when nongovernmental organizations (NGOs) in Thailand became aware of the registration. In trying to sort out the matter, the government of Thailand had three options:

* obtaining the revocation of the US trademark, which could be done until November 10 1998, for lack of use, but this condition was not met;

* lodging an action in the relevant jurisdiction(s) in the USA on the ground of false designation of origin (15 USC P125). According to the DNA fingerprinting carried out by Kasertsart University, Bangkok, JASMATI is not a progeny of KDML 105 and basmati rice. This assessment is not sufficient evidence; as was indicated by a USPTO legal advisor during a digital video conference held at the US embassy in Thailand on October 9 1998, a survey should be conducted amid American consumers, with a view to ascertaining that the trademark is confusing as to the place of origin and the nature of the product. The government of Thailand is still considering the expenditure likely to be incurred by this course of action;

* meanwhile, the Department of Foreign Trade of Thailand has filed an application for the complex certification mark "Thai Hom Mali, originating in Thailand", in an attempt to build a mental association between the Thai wording for "jasmine fragrant rice" and the indication of provenance in the future. If the reputation is to be gained worldwide, applications will also need to be filed abroad for such a trademark in the sixmonth priority period

provided for by the Paris Convention.[ii] As the application was filed on June 24 1998 (Trademark Gazette no. 1547, July 3 1998), the trademark should have been registered as from September 22 1998, provided no opposition was filed.

On a broader front, the Ministry of Commerce of Thailand, which is in charge of intellectual property as well as of exports promotion, is trying to raise the awareness of the Thai public and firms regarding the significance of intellectual property rights in the framework of international trade. To this effect and in order to comply with the TRIPs agreement, a draft bill on traditional and improved plant variety protection was given Cabinet approval for consideration on July 14 1998. Thailand is also drafting a law on geographical indications. The draft was passed to the State Council in early January 1999 and should be submitted to the Parliament soon.

[i] The opinions expressed in this article are those of the author alone and not of her employer. [ii] Thailand is not yet a member of this convention but, as a member of the WTO, the country is bound since January 1 1996 by the priority rights provided by the Paris Convention.