General Court considers whether UK tort of passing off is available for signs functioning as certification marks

European Union

In Government of Malaysia v Office for Harmonisation in the Internal Market (OHIM) (Case T-508/13, November 18 2015), the General Court has considered a case involving two identical marks - one was an application before OHIM, while the other (allegedly older) mark did not have any formal protection.

The trademark applied for was the following figurative sign:

The unregistered trademark on which the opposition was based had the following appearance:

There is no doubt that the two trademarks are almost identical and that the later trademark could not have been invented independently of the earlier sign.

The owner of the unregistered sign - the government of Malaysia - based its opposition against the application (No 9169343) on Article 8(2)(c) of the Community Trademark Regulation (207/2009) in conjunction with Article 6bis of the Paris Convention, and on Article 8(4) of the regulation. Only the latter ground was the subject matter of the decision of the General Court, because the fame and reputation of the earlier sign could not be upheld. The opponent specifically relied on the tort of passing off by claiming that it had acquired goodwill in this sign in the United Kingdom.

The Malaysian government's opposition was rejected by OHIM. The General Court then dismissed the government's action, which requested the annulment of the decision of the First Board of the Appeal of OHIM of June 27 2013.

There are a few interesting conclusions to be drawn from this decision and its grounds:

  1. During the procedure, it was generally agreed that the subject trademark was a certification mark. This necessarily raised the issue of whether a certification mark can acquire goodwill and, if so, in whose name. The First Board of Appeal had taken the view that it had not been established that, in the United Kingdom, the tort of passing off was available for a sign functioning as a certification mark. The General Court took a different view and confirmed that the tort of passing off is generally available for certification marks. This raised the question of who was entitled to the goodwill pertaining to the mark. After discussing whether there must be a single owner or whether there may be several owners and concluding that the latter option was applicable, the court concluded that the government of Malaysia was the sole owner of any goodwill created, because the government itself claimed that the sign could be used only by licensees.

  2. The main question in these proceedings was whether there can be a minimum level of 'required' or 'sufficient' goodwill in order to justify the enforcement of the tort of passing off. All instances agreed that there was no de minimis rule and that the required goodwill could be assessed only from the point of view of the relevant public.

  3. Another issue was whether a public body such as the government of Malaysia could acquire a goodwill which could serve as the basis for the tort of passing off. The court decided in the affirmative.

  4. Another interesting aspect was the finding that the public would consider the subject sign only as a secondary trademark and would recognise it only after perceiving the other signs incorporated into the product or service. This necessarily reduced the possibility of acquiring goodwill in the sign.

  5. As a practical matter, the government of Malaysia was only able to prove the sale of 1,685 products with packaging bearing the subject certification mark during the years 2008 and 2010. This was considered to be insufficient to demonstrate knowledge of that mark by the relevant public.

Arguably, this judgment is consistent and convincing.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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