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Wednesday, 18 January 2012

Against the grain? The General Court pronounces on status of "Basmati"

Being a self-confessed foodie, this Kat considers her rice cooker to be an integral part of her kitchen's cuinary toys. Accordingly, she was interested to read of the trade mark proceedings concerning the name BASMATI and its implications for the law of passing off. On 4 November 2003 -- and that really is a long time ago -- Siam Grains applied to register the word BASMALI and device as a Community trade mark in Class 30 for long rice. The trade mark was accepted and published in the Community Trade Marks Bulletin on 13 September 2004. On 10 December 2004, United Riceland Private Ltd (now Tilda Riceland Private Ltd) opposed on the basis of its use in the course of trade of the earlier non-registered sign BASMATI for rice. That is, under Article 8(4) of the Community Trade Mark Regulation, Tilda was entitled according to UK law to prevent, by means of an action for passing off, the use of Siam Grains' trade mark.


On 28 January 2008, the Opposition Division completely rejected Tilda's opposition. It found, in particular, that Tilda had failed to submit documents demonstrating the marketing of the rice which it exported to the UK. The Opposition Division thus found that Tilda had failed to prove that it had acquired the goodwill necessary to succeed under the law of passing off in the UK.The Board of Appeal dismissed Tilda's appeal from that decision on 19 March 2009. Essentially it held that, under Article 8(4) Tilda had to show that it was the proprietor of the right upon which the opposition was based. In this case, the Board of Appeal found that Tilda had not proved that it was such a proprietor because 'basmati' was a generic term used to designate a variety of rice.

Today the General Court held otherwise after a successful appeal by Tilda from the Board of Appeal decision: Tilda Riceland Private Ltd v OHIM (T304/09). In a rather blunt and workmanlike manner, the General Court systematically rejected many of the conclusions of the Board of Appeal.

First, the General Court observed that the Board of Appeal seemed to have held that Tilda had to prove that it formally possessed the ‘ownership’ of the BASMATI sign to sustain its opposition. The General Court stated (at [21]) that this seemingly restrictive approach adopted was contradictory to the fact that the signs referred to in Article 8(4) were most often based on use rather than registration.

Secondly, the General Court held (at [22]) that the question whether Tilda had acquired rights over a non-registered trade mark or over a sign used in the course of trade (and, accordingly, whether it was proprietor of the sign relied on for the purposes of Article 8(4)) could not be addressed without considering the UK law relied upon to support the opposition.

Thirdy, the General Court noted that, under the applicable UK (that is section 5(4) of the Trade Marks Act 1994) in respect of passing off, the status of Tilda's earlier right could not be defined independently (as the Board of Appeal essentially sought to do) without taking account of Tilda's ability to prevent the use of a trade mark.

Fourthly, the General Court held (at [28]) that the fact relied on by the Board of Appeal (that the sign BASMATI was generic) did not nevertheless mean that Tilda had not acquired rights over that sign for the purposes of Article 8(4) when read in conjunction with the applicable UK law. Further, regarding the assertion by the Board of Appeal that the term ‘basmati’ was generic, the General Court observed that under UK law a sign used to designate goods or services may have acquired a reputation on the market for the purposes of passing off, even though it originally had a descriptive character or was devoid of distinctive character. According to the General Court it further followed from the applicable UK law that a sign used to designate goods or services may have acquired a reputation on the market for the purposes of passing off, even though it was used by several traders in the course of business. That ‘extended’ form of the action for passing off, therefore allowed several traders to have rights over a sign which has acquired a reputation on the market. Accordingly, the Board of Appeal's assumption that the sign BASMATI has become generic was not capable, in the light the applicable UK law, of casting doubt on the fact that Tilda may have acquired rights over the sign BASMATI.

The General Court concluded (at [29]) that the Board of Appeal erred in rejecting the opposition on the ground that Tilda had not proved that it was proprietor of the BASMATI sign, without analysing specifically whether Tilda had acquired rights over that sign in accordance with UK law.

The IPKat notes that the word 'Basmati' remains a contentious issue, indeed one which divides India and Pakistan too (see earlier IPKat post here). Meanwhile, that other icon of the Indian subcontinent, Darjeeling, seems to have fared somewhat better in terms of protection (see here). Merpel has already gone back to sleep, having at first been stirred somewhat by hearing "rice" as "mice".

A kat-pat goes to Simon Malynicz (3 New Square) for being the first to tell the Kats about this.

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