CELEX: 62014TJ0136
Community trade mark
Opposition proceedings
Application for the Community figurative mark BASmALI
Earlier non-registered trade mark or earlier sign BASMATI
Relative ground for refusal
Article 8(4) of Regulation (EC) No 207/2009

Background to the dispute
On 4 November 2003, Siam Grains Co. Ltd filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (
OJ 1994 L 11, p. 1
), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (
OJ 2009 L 78, p. 1
)).
Registration as a mark was sought for the following figurative sign:
The goods in respect of which registration was sought are in Class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Long rice’.
The Community trade mark application was published in
Community Trade Marks Bulletin
No 37/2004 of 13 September 2004.
On 10 December 2004, United Riceland Private Ltd, now Tilda Riceland Private Ltd, the applicant, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
The opposition was based on the earlier non-registered trade mark or the earlier sign BASMATI, used in the course of trade in relation to rice.
The ground relied on in support of the opposition was that set out in Article 8(4) of Regulation No 40/94 (now Article 8(4) of Regulation No 207/2009). The applicant claimed, in particular, that it was entitled under the applicable law in the United Kingdom to prevent, by means of an action for passing off, use of the mark applied for.
On 28 January 2008, the Opposition Division rejected the opposition in its entirety. It found, in particular, that the applicant had failed to submit documents describing how the rice which that company exports to the United Kingdom is marketed. Accordingly, the applicant had failed to prove that it had acquired the goodwill necessary to succeed under the law of passing off in the United Kingdom.
On 20 March 2008, Tilda Riceland Private filed a notice of appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.
By decision of 19 March 2009, the First Board of Appeal of OHIM dismissed the appeal. In essence, it found that, under Article 8(4) of Regulation No 40/94, the opponent had to show that it was the proprietor of the right on which the opposition was based. In the case before it, however, the applicant had not shown that it was the proprietor of the right relied on. In particular, the Board of Appeal found that the term ‘basmati’ was not a trade mark or sign covered by proprietary rights, but simply the common designation of a variety of rice. It took the view that the term ‘basmati’ is generic. Furthermore, the Board of Appeal pointed out that the property protected by an action for passing off does not relate to the sign at issue but to the goodwill. The Board of Appeal concluded that the applicant had failed to show that it had ownership of the term ‘basmati’ and that, accordingly, the opposition did not fulfil the condition, provided for in Regulation No 40/94, relating to the existence of a proprietary right.
By judgment of 18 January 2012 in
Tilda Riceland Private
v
OHIM — Siam Grains (BASmALI)
, T‑304/09, ECR,
EU:T:2012:13
, the General Court annulled the Board of Appeal’s decision of 19 March 2009. The Court held that the Board of Appeal had erred in rejecting the opposition on the ground that the applicant had not proved that it was the proprietor of the sign in question, without analysing specifically whether the applicant had acquired rights over that sign in accordance with the law of the United Kingdom (paragraph 29 of the judgment).
Following the judgment in
BASmALI
, cited in paragraph 11 above,
EU:T:2012:13
, the case was reallocated to the Fourth Board of Appeal of OHIM.
By decision of 18 December 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It found, in essence, that the applicant had not provided any evidence that the name ‘basmati’ had been used as a distinctive sign in the course of trade. In those circumstances, the Board of Appeal did not examine whether the applicant had acquired any rights over that sign according to the law of the United Kingdom.
Forms of order sought
The applicant claims that the Court should:
—
annul the contested decision;
—
order OHIM to pay the costs.
OHIM contends that the Court should:
—
dismiss the action;
—
order the applicant to pay the costs.
Law
In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(4) of Regulation No 207/2009.
First, the applicant submits that the sign BASMATI is distinctive inasmuch as it identifies a specific type of rice with a reputation on account of its quality, fragrance and other properties. The applicant states that it filed evidence in that regard before OHIM. It maintains that the Board of Appeal appears to be adding a requirement that proprietorship in the sign has to be exclusive. It submits that, in that context, the sign BASMATI is not different from the signs CHAMPAGNE or SWISS CHOCOLATE and can be protected by an action for passing off in exactly the same way. The applicant maintains that, having regard to the evidence in the present case, the sign BASMATI satisfies all the criteria for protection under the law of the United Kingdom. Secondly, the applicant takes the view that as a foreign producer and exporter of the goods in question, it is the owner of the goodwill in the sign BASMATI (together with other traders), even though another company actually markets the goods in the United Kingdom. It submits that the Board of Appeal overlooked the evidence which it put forward in the course of the administrative procedure. Thirdly, the applicant submits that the fact that there are multiple traders using their own distinctive trade marks along with the sign BASMATI does not undermine the distinctiveness of that sign.
OHIM concedes that the approach taken by the Board of Appeal, albeit in line with the established notion of distinctiveness under EU law, is difficult to reconcile with the peculiar features of the extended form of passing-off and with the decisions taken by the United Kingdom courts. It maintains that the evidence which the applicant placed on the file does not, however, prove that basmati rice is perceived by the United Kingdom public as having a ‘distinct reputation’ in the light of its special qualities, a criterion which stems from the case-law of the United Kingdom. OHIM concedes that the Board of Appeal did not make any express reference in that regard. It maintains that it is, however, apparent from the Board of Appeal’s analysis that, if the Board of Appeal had expressly addressed that issue, it would have concluded that the evidence filed did not support a finding of ‘distinct reputation’ attached to the sign Basmati. Lastly, for the sake of completeness, OHIM submits that the applicant did not show that it was the owner of goodwill or that it had suffered damage in that regard. OHIM concludes that, even assuming that the Board of Appeal’s position might not be correct as regards whether the traditional notion of distinctiveness as identifying the commercial origin of the goods also applies in a scenario of extended passing-off, the evidence on record is insufficient to show that the relevant United Kingdom public perceives the sign Basmati as having a ‘distinct reputation’.
It must be pointed out that, under Article 8(4) of Regulation No 207/2009, the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance may file a notice of opposition to the registration of a Community trade mark where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign, first, rights to that sign were acquired prior to the date of application for registration of the Community trade mark or the date of the priority claimed for the application for registration of the Community trade mark and, secondly, that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Furthermore, to the extent that the applicant relies in support of its opposition on the action for passing off provided for under the law of the United Kingdom, it should be noted that the law of the Member State which is applicable in the present case is the Trade Marks Act 1994, section 5(4) of which provides, inter alia:
‘A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented –
(a)
by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade …’
It follows from that provision, as interpreted by the national courts, that the opponent must establish, in accordance with the legal rules governing actions for passing off, as laid down by the law of the United Kingdom, that three conditions are satisfied, namely, first, the goodwill acquired (that is to say, the attractive force which brings in custom) by the non-registered trade mark or the sign at issue; secondly, misrepresentation on the part of the proprietor of the subsequent trade mark; and, thirdly, damage caused to that goodwill (see judgment in
BASmALI
, cited in paragraph 11 above,
EU:T:2012:13
, paragraph 19 and the case-law cited).
It also follows from the decisions of the United Kingdom courts that a sign used to designate goods or services may have acquired a reputation on the market for the purposes of the law applicable to passing off, even though it is used by several traders in the course of business (
Chocosuisse Union des fabricants suisses de chocolat & Ors
v
Cadbury Ltd
. [1999] EWCA Civ 856). That ‘extended’ form of passing off, recognised by the United Kingdom courts, accordingly enables several traders to have rights over a sign which has acquired a reputation on the market (judgment in
BASmALI
, cited in paragraph 11 above,
EU:T:2012:13
, paragraph 28).
The Board of Appeal pointed out that the conditions relating to the use of the name ‘basmati’ in the course of trade and to the significance of that sign had to be interpreted in the light of the uniform standards of EU law. In that regard, the Board of Appeal stated that, to fulfil the requirement of use in the course of trade, an unregistered trade mark or a sign had to be used as a distinctive element in that it had to serve to identify an economic activity engaged in by its proprietor. In the case before it, the Board of Appeal found that the evidence placed on the file did not support the conclusion that the applicant had used the name ‘basmati’ as a distinctive sign in the course of trade and that, therefore, one of the conditions for the application of Article 8(4) of Regulation No 207/2009 was not met.
Although the contested decision is worded ambiguously, it is apparent from that decision that the Board of Appeal took the view that any possible distinctiveness of the sign BASMATI had to enable the applicant to distinguish its goods from those of other undertakings, including those which also market basmati rice. That is apparent, in particular, from paragraph 33 of the contested decision in which the Board of Appeal states clearly that the fact that basmati rice is marketed under various trade marks ‘rules out the possibility’ that the term ‘basmati’ as such could be perceived as an element ‘that distinguishes rice from one undertaking from rice of other undertakings’. Furthermore, in paragraphs 25 and 31 of the contested decision, the Board of Appeal pointed out that the basmati rice exported by the applicant to the United Kingdom was not marketed by the applicant but by another company. In addition, in paragraph 27 of the contested decision, the Board of Appeal stated that the name of an agricultural product, the importation of which had been subject to certain regulations on account of the common agricultural policy of the European Union, was understood as designating the characteristics of the product ‘and not its commercial origin’. The Board of Appeal also referred to the ‘commercial origin’ of the goods at issue in paragraphs 29 and 32 of the contested decision. Furthermore, in paragraph 31 of the contested decision, the Board of Appeal found that the ‘trade mark used’ for ‘identifying’ the rice produced by the applicant is TILDA and not the term ‘basmati’. As a basis for its finding, the Board of Appeal pointed out that the evidence put before it showed that the term ‘basmati’ had been used in combination with trade marks or company names.
In other words, the Board of Appeal took the view that the distinctiveness of the sign at issue had to result from its function of identifying the commercial origin of the goods. OHIM confirmed that reading of the contested decision at the hearing.
However, the approach which the Board of Appeal took in the contested decision is, in that regard, contrary to Article 8(4) of Regulation No 207/2009.
It is indeed true, as the Board of Appeal points out, that, under Article 8(4) of Regulation No 207/2009, the sign at issue must be used as a distinctive element in that it must serve to identify an economic activity engaged in by its proprietor (judgment of 29 March 2011 in
Anheuser-Busch
v
Budějovický Budvar
, C‑96/09 P, ECR,
EU:C:2011:189
, paragraph 149).
However, that cannot mean that the function of the use of a sign, under Article 8(4) of Regulation No 207/2009, should be exclusively that of identifying the commercial origin of the goods or services at issue. In reaching that conclusion, the Board of Appeal, as the applicant maintains, in essence, in its written pleadings, laid down a condition which is not provided for by Article 8(4) of Regulation No 207/2009.
It must be pointed out in that regard, that Article 8(4) of Regulation No 207/2009 covers non-registered trade marks and any ‘[other] sign’ used in the course of trade. In that context, and in the absence of any indication to the contrary, the function of the use of the sign at issue may, in the light of the nature of that sign, lie not only in the identification by the relevant public of the commercial origin of the goods concerned, but also, inter alia, in the identification of their geographical origin and the special qualities inherent in them (see, to that effect, judgment in
Anheuser-Busch
v
Budějovický Budvar
, cited in paragraph 27 above,
EU:C:2011:189
, paragraph 147) or of the characteristics on which their reputation is based, which OHIM, moreover, observes in its written pleadings. The sign at issue, in the light of its nature, may thus be classified as a distinctive element if it serves to identify the goods or services of one undertaking in relation to those of another undertaking, but also, inter alia, if it serves to identify certain goods or services in relation to other similar goods or services. The approach applied by the Board of Appeal therefore effectively excludes signs which are used by a number of traders or which are used in association with trade marks from the benefit of Article 8(4) of Regulation No 207/2009, even though that provision does not provide for such an exclusion. That is true, for example, of geographical indications which are not registered in the European Union and which may benefit from the provisions of Article 8(4) of Regulation No 207/2009. That is also true of signs which, although they are not registered, may be protected by virtue of an action for passing off. The Board of Appeal itself, moreover, pointed out that an action for passing off concerned signs which made it possible to distinguish one category of goods in relation to ‘other similar goods’ (paragraph 19 of the contested decision). It must also be borne in mind that the extended form of passing-off, which is recognised by the United Kingdom courts, enables a number of traders to have rights over a sign which has acquired a reputation on the market.
In that context, certain signs, although they are used by a number of traders or in association with trade marks, may be distinctive elements if they make it possible to identify the economic activity engaged in by their proprietors. It must, moreover, be pointed out, in that regard, that the Board of Appeal stated, citing the
Oxford English Dictionary
, that basmati rice was ‘a superior variety of Indian rice, characteristically light and fragrant when cooked’.
It must be added that, although the applicant’s goods are indeed marketed under the trade mark TILDA, as the Board of Appeal stated in paragraph 25 of the contested decision, OHIM’s file shows that the term ‘basmati’ also appears very clearly on the packaging of those goods. It is common ground in that regard, as the Board of Appeal stated in paragraph 25 of the contested decision, that the applicant sold ‘Indian Basmati … rice’ to another company. Furthermore, in that context, it is irrelevant, for the reasons which have already been stated, that the applicant’s goods which were exported to the United Kingdom were marketed in that territory by another company and not by the applicant itself, since the function of the use of the sign at issue is not necessarily that of identifying the commercial origin of the goods concerned. Furthermore, there is nothing to suggest that, under Article 8(4) of Regulation No 207/2009, an opponent ought to show that he has himself marketed his goods in the territory concerned.
Consequently, the reasons which the Board of Appeal gave in support of the rejection of the opposition do not permit the inference that the sign at issue has not been used as a distinctive element which serves to identify an economic activity engaged in by the applicant.
OHIM’s other arguments are not capable of invalidating that finding. In particular, as regards the claim which OHIM put forward in its written pleadings that the evidence submitted would not in any event have enabled the Board of Appeal to conclude that the sign BASMATI had acquired a ‘distinct reputation’ in the relevant territory or that the applicant is the owner of goodwill or has suffered damage in that regard, it is common ground that those questions were not examined by the Board of Appeal. It must be borne in mind that, in accordance with Article 65(2) of Regulation No 207/2009, the General Court carries out a review of the legality of the decisions of OHIM (see, to that effect, judgment of 5 July 2011 in
Edwin
v
OHIM
, C‑263/09 P, ECR,
EU:C:2011:452
, paragraph 52). If it holds that such a decision, called into question in an action brought before it, is vitiated by illegality, it must annul it. It may not, however, dismiss the action while substituting its own reasoning for that of the competent adjudicating body of OHIM which is the author of the contested act (judgment of 25 March 2009 in
Kaul
v
OHIM — Bayer (ARCOL)
, T‑402/07, ECR,
EU:T:2009:85
, paragraph 49, and judgment of 9 September 2010 in
Axis
v
OHIM — Etra Investigación y Desarrollo (ETRAX)
, T‑70/08, ECR,
EU:T:2010:375
, paragraph 29). It follows that the arguments which OHIM set out in its written pleadings cannot result in the dismissal of the action.
In view of all of those factors, the applicant’s single plea in law must be upheld and, consequently, the contested decision must be annulled.
Costs
Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
As OHIM has been unsuccessful, inasmuch as the contested decision is annulled, and the applicant has sought an order for costs against it, OHIM must be ordered to bear its own costs and to pay those incurred by the applicant.

On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:

1.
Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 18 December 2013 (Case R 1086/2012-4);

2.
Orders OHIM to bear its own costs and to pay those incurred by Tilda Riceland Private Ltd.

Frimodt Nielsen
Dehousse
Collins
Delivered in open court in Luxembourg on 30 September 2015.
[Signatures]
(
*1
)	Language of the case: English.