Case T‑136/14

Tilda Riceland Private Ltd

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(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)

Summary — Judgment of the General Court (Sixth Chamber), 30 September 2015

1.      National law — Reference to national law — United Kingdom law — Action for passing off

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 — Use of the sign in trade — Concept

(Council Regulation No 207/2009, Art. 8(4))

3.      Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal

(Council Regulation No 207/2009, Art. 65(2))

1.      See the text of the decision.

(see paras 20-22)

2.      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.

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.

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 or of the characteristics on which their reputation is based. 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. A different approach would effectively exclude 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.

(see paras 27-29)

3.      See the text of the decision.

(see para. 33)