Judgment of 30 September 2015 in CaseT‑136/14 Tilda Riceland Private Ltd v OHIM

The General Court has (for the second time) annulled the decision of the Board of Appeal rejecting an opposition based on extended passing off. The decision confirms that the UK doctrine of extended passing off is compatible with Article 8(4) of Regulation No 207/2009 (the CTMR).

Tilda Riceland Private Ltd brought an opposition against a CTM application for a figurative sign incorporating the word BASMALI. The opponent claimed to own non-registered rights to BASMATI due to its long-standing use of this sign in the course of trade in relation to a particular type of rice with specific origin. The opposition was based on the UK claim for “extended passing off” which allows actions in passing off to be brought by (at least) one of a class of traders sharing the collective goodwill in a sign. The opponent invoked Article 8(4) CTMR which allows for oppositions to be brought based on unregistered trade marks or other signs used in the course of trade of more than merely local significance. The opposition had previously already been refused by the Board of Appeal in 2009 but that decision was annulled by the General Court in 2014 and the case was remitted back to OHIM.

On re-examination of the opposition the Board of Appeal again refused the opposition, holding in essence that the opponent failed to show that the sign BASMATI was capable of being used to distinguish the opponent’s goods from the goods of other undertakings. The Board found that this was particularly unlikely because BASMATI labelled rice was marketed by a number of traders and always in combination with various other trade marks (such as SAINSBURY’S and TESCO). The Board also found it significant that the opponent was only a foreign manufacturer and exporter of the rice in question and did not use the BASMATI mark in the UK market itself.

This decision has now been annulled by the General Court. The court clarifies that Article 8(4) does not require that the function of the use of a sign should be exclusively that of identifying the commercial origin of the goods at issue. It was therefore not necessary for the opponent to show that the word BASMATI could be used to distinguish its goods from that of other undertakings. It would be sufficient to find that the sign BASMATI serves to identify (inter alia) geographical origin of the goods at issue and the special qualities inherent in them, or of the characteristics on which their reputation is based. Therefore a sign can be classified as a distinctive element for the purposes of Article 8(4) also if (inter alia) it serves to identify certain goods or services in relation to other similar goods and services.

The Court also confirms that since Article 8(4) does not require that a sign designate the source of origin, it is also not relevant for a claim under that provision whether the opponent had itself marketed the goods in the territory at issue.

This case is significant in its (repeated) recognition of the extended form of passing off at the CTM level. It opens up the scope for opposition and invalidity actions to be brought by (at least) one member of a class of traders who shares in the collective reputation of a particular non-registered sign. It is therefore good news for individual members of trade associations seeking to protect their (collective) reputation in a particular mark.