Case T‑508/13
Government of Malaysia
v
Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (OHIM)
(Community trade mark — Opposition proceedings — Application for Community figurative mark HALAL MALAYSIA — Earlier non-registered figurative mark HALAL MALAYSIA — Relative ground for refusal — No rights to the earlier sign acquired pursuant to the law of the Member State before the date of the filing of the Community trade mark application — Article 8(4) of Regulation (EC) No 207/2009 — Use of the earlier mark as a certification mark — Action for passing off — Absence of goodwill)
Summary — Judgment of the General Court (Fourth Chamber), 18 November 2015
1. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Conditions — Interpretation in the light of EU law — Assessment by reference to criteria determined by the national law governing the sign relied on
(Council Regulation No 207/2009, Art. 8(4))
2. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Sign giving its holder the right to prohibit the use of a more recent trade mark — Burden of proof
(Council Regulation No 207/2009, Art. 8(4))
3. National law — Reference to national law — United Kingdom law — Action for passing off
4. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Sign giving its holder the right to prohibit the use of a more recent trade mark — Figurative mark HALAL MALAYSIA
(Council Regulation Non 207/2009, Art. 8(4))
1. See the text of the decision.
(see paras 20-22)
2. See the text of the decision.
(see paras 22, 23)
3. It follows from national case-law 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 an action for passing off.
It further follows from national case-law 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 an action for passing off, even though it was used by several operators. It follows that those operators can have rights over a sign which has acquired a reputation on the market, under an ‘extended’ form of that action, recognised by national case-law.
Public bodies too may be protected by passing off actions to the extent that their activities can generate goodwill. If those bodies make use of a particular sign that belongs to them exclusively, they may rely on the goodwill attached to the marketing of goods and services bearing that sign. Similarly, if those bodies share the use of any sign with other operators, the goodwill may be relied on by the same public bodies and by the operators in question.
In the event that an earlier sign is used by several operators, ownership of the goodwill must be assessed in the light of the circumstances of the case. Consequently, in order to determine whether the party opposing registration of a certification mark as a Community trade mark is the sole owner of the goodwill, the attractive force which brings in custom in respect of the certification mark must be assessed.
(see paras 34, 35, 38, 39)
4. In so far as the sign prior to the figurative Community trade mark applied for HALAL MALAYSIA is used to designate goods or services certified by it, it may, as a certification mark, have acquired the goodwill required under United Kingdom law on passing off.
Having regard to the opposing party’s certification system relating to the compliance of goods with Sharia law, to its function of inspecting the manufacturing processes developed by third parties wishing to become authorised users of its certification mark and to its function of monitoring use of the certification mark by those authorised users so as to ensure that the quality standards of its system are complied with, it is the opposing party that must be regarded as the owner of the goodwill.
When consumers of products and users of services see the certification mark awarded by the opposing party, they are informed of the compliance of those products or services with the halal diet according to the control system guaranteed in Malaysia. Moreover, the certification mark can indicate a public profile, governmental in origin, which informs consumers of that compliance and reinforces the opposing party’s exclusive ownership of it, as opposed to an ownership shared with other operators, even those who are authorised to use the mark.
However, the goodwill required by United Kingdom law on passing off, both in its ‘extended’ and ‘classic’ form, has not been demonstrated.
(see paras 36, 42-44)