The EU General Court ingrains protection for Basmati despite Brexit

Mills & Reeve were instructed on behalf of The Agricultural and Processed Food Products Export Development Authority (APEDA), a statutory authority of the government of India, which represents the interests of Indian individuals and companies involved in the growing, processing and export of agricultural products, including Basmati rice.

“Basmati” is a name traditionally applied to an aromatic rice grown and produced in a particular geographical region of the Indian sub-continent, namely, a belt of North India and the adjacent part of Pakistan below the foothills of the Himalayas. Worldwide “Basmati” has been exclusively associated with this particular type of rice and Basmati rice has certain unique characteristics which owe their origin to the special agro-climatic conditions prevailing in this region. “Basmati” has acquired goodwill in the UK, which is collectively owned by UK traders in genuine Basmati rice.

Hamid Ahmad Chakari applied to register the trade mark below (which included the words “Abresham Super Basmati Selaa Grade One World's Best Rice”) as an EU trade mark for various rice-based and constituent products. These goods were not limited to genuine Basmati rice, so APEDA wished to oppose the application.

As APEDA is not a trader in Basmati rice, this application was opposed by Indo European Foods Ltd, a UK trader in Basmati rice, on the basis of the extended form of passing off, a legal action available in the UK.

The opposition was rejected by the EU Intellectual Property Office (EUIPO) on the basis that the opponent had failed to prove that there was the necessary goodwill in “Basmati” in the UK. This decision was appealed to the EUIPO Board of Appeal, which accepted that there was goodwill in “Basmati” in the UK but still rejected the opposition on the basis that the opponent had failed to prove that the use of the opposed mark for the goods applied for would result in misrepresentation and damage. This decision was appealed to the EU General Court.

At the time of the General Court decision, the Brexit transition period had ended. As the opposition was based only on UK rights and the UK had left the EU, the EUIPO argued that the opposition was devoid of purpose. The court also had to decide whether the Board of Appeal was correct to hold that there was no misrepresentation and damage.

The General Court held that the two relevant dates were the one on which the application was filed while the UK was an EU member and the one of the Board of Appeal decision during the Brexit transition period. Accordingly, the UK goodwill in “Basmati” was still capable of forming a basis for the opposition.

It also held that the extended form of passing off was a basis for opposing an EU trade mark application and the use of the opposed mark would give rise to a misrepresentation and damage. Therefore, all elements of the grounds of opposition had been proven.

The General Court accordingly annulled the Board of Appeal decision.  

Natalie Welch, Senior Associate at Mills & Reeve said: “This judgment provides important clarification that EU trade mark oppositions based solely on UK rights are admissible despite Brexit, at least so long as a Board of Appeal decision was given prior to the end of the Brexit transition period. More generally, this decision will also be welcomed by traders in genuine Basmati rice in the EU, as the extended form of passing off (which is also an action in Ireland) remains a valid ground of opposition.”

For the full judgment click here.