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4-Patents: Thailand reacts on rice patenting



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TITLE: The JASMATI Trademark Affair
AUTHOR: Muriel Lightbourne, French Patent Office, Bangkok
PUBLICATION: IP Asia
DATE: February 1999
SOURCE: Asia Law & Practice, Hong Kong
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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same company and then later withdrawn (for lack of submission of a statement 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.

IP Asia - February 1999
 Muriel Lightbourne 1999


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