Extended Passing Off: Tilda Rice to the Challenge

The General Court’s decision in Tilda v OHIM/Siam Grains is a reminder of the powerful tool of extended passing off (EPO). The action enables companies sharing collective goodwill in a distinctive name for specific goods to seek redress against other traders’ use and registrations of marks which could cause damage through a misrepresentation e.g. ‘Australian Champagne.’ Tilda opposed an application for BASMALI based on their unregistered use of BASMATI for rice. The General Court held that to establish EPO all that needs to be shown is that the sign (BASMATI) identifies the geographical origin of the goods and their unique inherent qualities, or the characteristics relating to their reputation. This is a lower bar than what the lower authorities required i.e. showing that the sign indicates the exact commercial trade origin of the goods - which would be inherently more difficult where goodwill is shared amongst several traders! This is a welcomed decision that reinforces the usefulness of this UK-specific action in tackling wider EU rights issues and provides some clarity on what is required. Shifting the focus away from designating trade origin towards geographical indication or product characteristics also opens up the right to traders who have not directly marketed the goods in the territory e.g. producers of the product based outside the UK. Stobbs engages with both UK and non-UK-based clients on all rights issues and can provide advice on international enforcement strategies.

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