This case represents a significant and valuable development to the protection afforded by extended form passing off; additionally, expanding that beyond goods of the same type (ie, rice) to similar or complementary services (such as restaurant services). It thereby benefits, not just the producers in India and Pakistan, but also protects UK consumers.
In trade mark opposition proceedings instituted by Mills & Reeve LLP (Simon Malynicz QC appearing for the opponent), the UK Intellectual Property Office held that the name “Basmati” is protected. Mills & Reeve were instructed by Indian law firm K&S Partners on behalf of the Indian Agricultural and Processed Food Products Exports Development Authority.
“Basmati” is the widely recognised name for a premium variety of rice, a well-known aromatic and fragrant long grain rice grown in the Himalayan regions of India and Pakistan. Basmati is to rice as Champagne is to wines. But, like many specialist foods, it does not benefit from the mainstream forms of intellectual property protection, such as trade marks or patents. A different approach is needed to protect a name like this.
The case starts with the Indian food giant, Amira Pure Foods Private Limited. Amira applied to register “BASMATI BUS” as a UK trade mark for “Restaurant and cafeteria services; provision of food and drink in restaurants and via mobile trucks.” This would cover restaurants and cafes serving any kind of food, and, importantly, any type of rice.
The Agricultural and Processed Food Products Exports Development Authority of India (APEDA) is a statutory authority of the Government of India, established to represent the interests of Indian individuals and companies in growing, processing and exporting agricultural products of India. APEDA was concerned that if “BASMATI BUS” were to be registered as a trade mark in respect of restaurants serving any variety of rice, this would damage the distinctive character and reputation of the name “Basmati”.
However, “Basmati” is not registered as a certification trade mark in the UK or EU nor, at present, as an EU Protected Geographical Indication. So APEDA needed to rely on passing off – or more accurately “extended form passing off”, in order to oppose registration of “BASMATI BUS”; still not a straightforward approach. “Extended form passing off” protects the collective goodwill of a class of traders in the name or a recognised class of product – such as “Swiss chocolate”, “Advocaat” or “Champagne”.
But there were two obstacles to this approach: APEDA is only a non-trading statutory body and thus could not, itself, rely on passing off. This was overcome by Indo European Foods Limited, the importer of the well-known “Kohinoor”, “Trophy” and “Tohfa” bands of Basmati rice taking the action forward. Secondly, while “Basmati” may be well known as a variety of rice, Amira’s application was to register the mark for restaurant services.
Amira denied that Indo European Foods had any goodwill in the name Basmati. It argued that “Basmati” was a generic term describing certain types of rice that could not be monopolised; it was a straightforward description of a type of rice. However, a name such as “Champagne” can have goodwill residing in it if it is associated with goods having qualities which attract consumers to buying them – that is the goodwill which supports “extended form passing off”. So it was necessary to collect not just evidence that Indo European Foods traded in Basmati rice, but that “Basmati” was a recognised name for a particular variety of rice and had goodwill in the UK.
Mills & Reeve collected evidence of Indo European Foods’ sales of its Basmati rice brands in the UK since 2001, and its advertising and marketing expenditure for these brands. The opponent’s evidence also included the “British Retail Consortium Code of Practice on Basmati Rice” - which defines Basmati rice and sets out the minimum specifications for Basmati rice sold in the UK; the UK Government classification of Basmati rice and the Food Standards Agency definition of Basmati rice; and details of action taken against sellers of rice falsely described as “Basmati”. In addition Mills & Reeve put forward evidence from newspaper articles referring to Basmati rice being a high quality product and including celebrity chef recipes using Basmati rice (for example, Jamie Oliver, describing Basmati as being “widely considered to be the best quality white rice”; and photographs taken of Basmati rice products – from various sources – on supermarket shelves including upmarket retailers such as Waitrose.
In response, before the hearing of the opposition, Amira proposed to limit the specification for their trade mark application so that it would refer to the services: “Restaurant and cafeteria services, all involving the use of Basmati rice; provision of food containing Basmati rice and drink in restaurants and via mobile trucks.”
For Indo European Foods (and APEDA) this amendment was not enough. The scope of the words “involving” and “containing” was not clear, and would not limit the services covered by the mark so that they excluded the provision of non- Basmati rice – a point accepted by the IPO Hearing Officer.
In his decision, the Hearing Officer found that:
The term “Basmati” denotes a clearly defined class of goods and “Basmati” has a reputation giving rise to goodwill for the product among a significant section of the public Amira also argued that, while the names of goods such as “Champagne” and “Advocaat” covered similar or identical goods, in contrast, the services covered by Amira’s application were not similar nor “very complementary” to rice. To address this issue, the Hearing Officer proposed that Amira might wish to amend their specification to reflect accurately that rice supplied should be Basmati, and only Basmati, rice, namely to: “Restaurant and cafeteria services, any food containing rice being basmati rice as defined and covered by the Rice Association’s code of practice on basmati rice; provision of food and drink in restaurants and via mobile trucks, any food containing rice being basmati rice as defined and covered by the Rice Association’s code of practice.” He set a deadline of 14 days for Amira to make this amendment. The decision is significant for two reasons:
- Amending the specification in this way addressed APEDA’s concerns; and that amendment was agreed and Amira’s application was allowed to proceed to registration.
- In a decision which provides broader protection than earlier extended passing off cases, the Hearing Officer did not agree with this argument: the provision of food and drink through cafes, mobile trucks etc. included providing prepared meals, and such prepared meals could well contain rice. Consumers of prepared meals were also likely to purchase rice (including Basmati rice) from shops and supermarkets. They would be familiar with Basmati rice and know that it is a particular variety of rice. So when they saw “BASMATI BUS” being used for the provision of food and drink, a substantial number would be likely to conclude that, if the meal provided contains rice, the rice will be Basmati rice rather than any other type of rice. So if the services provided under “BASMATI BUS” were not restricted to the provision of Basmati rice there could be misrepresentation. And that could have a damaging impact on the name “Basmati” if consumers were served with food they thought contained Basmati rice but this did not live up to its name
He, therefore, held that goodwill is protectable and that, as a trader in Basmati rice, Indo European Foods could rely on that goodwill.
It builds on the BASMALI decision (Tilda Riceland Private Ltd v OHIM). That also related to Basmati rice, the EU court deciding that extended form passing off could be used to oppose an EU trade mark application. It was enough for a term to identify particular goods or services and it did not necessarily have to identify their commercial origin. A number of traders could have rights over a term which has acquired a reputation in the market. In that case, the EU court did not definitively decide that “Basmati” was such a term, and that it would be protected by extended form passing off; it decided simply that it was possible for it to be. The UK Intellectual Property Office has now gone one step further in concluding that ”Basmati” is indeed protected by extended form passing off.
“Basmati” has now not only been found to be a term warranting the same protection as terms such as “Champagne”, “Sherry”, “Advocaat”, “Scotch whisky”, “vodka” and “Swiss chocolate”, but that the protection extends beyond goods of the same type (that is to say, rice) to similar or complementary services (such as restaurant and like services). This is a significant and valuable extension of the scope of the protection afforded by extended form passing off; something which benefits not just the producers in India and Pakistan, but also the consumers in the UK.