Going against the grain - basmati rice EU trade mark opposition decision - Kuits Solicitors Manchester
  • Insights
  • Going against the grain - basmati rice EU trade mark opposition decision

Going against the grain – basmati rice EU trade mark opposition decision

Going against the grain – basmati rice EU trade mark opposition decision

27th January 2022 - Published by Kuits Intellectual Property Team

Following the end of the Brexit transition period, more often than not the advice that we now give to clients in relation to registrability of its marks is limited to the legislation of England and Wales. However, a recent decision in relation to the opposition of an EU trade mark application by reliance on the UK right of passing off demonstrates that those business which are currently involved in action at the European Union Intellectual Property Office (EUIPO) may need to continue to consider the interaction between the EU process and the relevant non-EU rights. These points are dealt with in the recent Judgment of the General Court ‘Indo European Foods Ltd v EUIPO’ and Hamid Chakaria (Case T-342/20).

The case

The background to the matter involved Mr Chakari filing an application at the EUIPO in 2017, to register an EU trade mark for a figurative sign in Classes 30 and 31 in relation to rice and rice-based foods. The mark included the wording ‘Abresham Super Basmati Selaa Grade One World’s Best Rice’. Indo European Foods opposed this mark based on use of its own earlier unregistered UK word mark ‘BASMATI’ relating to rice.

Indo European Foods argued that in accordance with the EU Regulations, it was entitled to prevent use of the mark applied for by Mr Chakari under the applicable UK provision of extended passing off. Nevertheless, both the Opposition Division and the Fourth Board of Appeal of the EUIPO rejected the Opposition, leading to the appeal against the EUIPO decision and subsequent judgment of the General Court on 6 October 2021.

Prior to addressing the questions before it, the General Court considered the admissibility to the claim. The EUIPO argued that as a result of Brexit and the expiry of the Withdrawal Agreement transition period, Indo European Foods should not be able to bring this action. They argued that the UK was no longer a Member State and therefore “passing off” under UK law could not be relied on as an earlier right under the EU Regulations. The General Counsel, however, decided that the application for Mr Chakari’s mark and the Board of Appeal decision were made within the transition period during which EU regulations still applied to the UK, therefore the action was not devoid of purpose.

Once the General Counsel decided that it could consider the subject matter, it reviewed the legal provision of Info European Foods under the EU Regulations. The conditions set out under the EU Regulations required the General Court to consider the criteria of the unregistered mark, i.e. the Basmati mark, as set out by the Member State. Under UK trade mark law, a trade mark cannot be registered if its use is prevented by laws, such as the law of passing off; thus protecting unregistered trade marks and other signs used in the course of trade. Indo European Foods relied on extended passing off, which enables a number of traders to hold a collective goodwill in a sign, and therefore such notional use of Mr Chakari’s mark could be misrepresentation and cause damage. The General Counsel noted that misrepresentation could occur even if the goods were of a different nature because non-negligible members of the public may believe that goods bearing Mr Chakari’s mark could be associated with basmati rice. Furthermore, the General Counsel noted that actual use of the mark was not required under UK passing off nor the EU Regulation.

The General Court decided that damage was likely to occur as a result of the likelihood of direct loss of sales and the loss of distinctiveness of the sign or the ‘very singularity and exclusiveness’ of genuine basmati rice.

Therefore, the General Counsel upheld Indo European Foods’ appeal and annulled the Board of Appeal’s decision.

What can you take away from this case?

Whilst Brexit can still influence the outcomes, such exceptions will depend on the timing of the application, opposition and EUIPO decision. Another interesting takeaway point from this case is the statement from the General Court requiring the EUIPO to obtain information about the national law of the Member State concerned to assess the applicability for grounds for refusal of a registration; in short therefore, requiring the EUIPO to carry out its own assessment.

In relation to the success of the Opposition, it is our view that basmati rice mark being a household name would have greatly strengthened the Opposition, however, our suggestion to clients would be to mitigate their risks by registering any names or marks that they rely on in the course of trade in order to clearly afford them protection in the relevant jurisdictions.

Get in touch with an IP specialist today

If you have any questions about registering trade marks please contact Senior Associate Humna Nadim on 0161 838 7816 or email humnanadim@kuits.com.

Subscribe to our mailing list