Before going into the details of the decision, what is extended passing off?
Like the law on passing off, it is a legal construction of UK courts which Danckwerts J first acknowledged in 1960 in Bollinger SA v Costa Brava Wine [this resulted from an action aimed at preventing the defendants from calling their product 'Spanish champagne'], and has more recently excited the minds and hearts (and possibly also the hunger) of passing off enthusiasts with, for instance, the Greek Yoghurt case [here, here and here].
Unlike the classic form of passing off, its extended version has mainly to do with the fact that goodwill (one of the 3 requirements of the action, the other two being misrepresetation and damage) in a name that is distinctive of a particular class of goods is shared between a class or group of traders.
Going back to this recent GC decision, the background was as follows.
What had happened before
In 2003 Siam Grains submitted an application to register the sign reproduced above as a Community trade mark (CTM) in Class 30 (long rice, more specifically) of the Nice Classification.
|Not quite basmati rice, |
but Mildred is equally startled
|BASMATI + |
extended passing off