Post-Brexit issues at heart of EUIPO ‘Basmati’ dispute
CJEU affirms Indo-European Foods' standing to challenge a trademark registration despite Brexit | Decision addresses post-Brexit uncertainty of proceedings initiated before the transition period | Court stresses that ‘legal interest’ exists from the start of an action until the final judgment.
The Court of Justice of the European Union (CJEU) has dismissed an appeal by the European Union Intellectual Property Office (EUIPO) regarding a Basmati trademark.
The judgment, issued on June 20, 2024, addressed the implications of Brexit on IP rights, specifically clarifying the ongoing relevance of legal proceedings initiated before the Brexit transition period ended.
The case revolved around a decision made by the General Court of the EU concerning the registration of the EU figurative mark ‘Abresham Super Basmati Selaa Grade One World’s Best Rice’ by Hamid Ahmad Chakari.
This registration was contested by Indo-European Foods, citing its earlier non-registered UK word mark ‘Basmati’.
Case background
Chakari filed for registration of the mark in June 2017 with Indo-European Foods opposing the registration, citing its non-registered UK mark ‘Basmati’ and claiming it could prevent the use of the new mark under UK law via an "extended" action for passing off.
The EUIPO’s Opposition Division rejected the opposition due to insufficient evidence of the earlier mark’s significant use, and the Fourth Board of Appeal upheld this decision.
Later, the General Court annulled the Board of Appeal’s decision, leading to the current appeal by EUIPO.
The CJEU aimed to clarify whether the earlier UK mark ‘Basmati’ could prevent the registration of the contested mark under EU law, despite the UK's withdrawal from the EU.
The judgment clarified that legal protection for the earlier mark would continue after the UK's transition period, and affirmed that the right to bring proceedings remains valid beyond the transition period.
Trademark rights and Brexit transition
Indo-European Foods challenged the EUIPO decision, seeking its annulment and alteration.
The EUIPO argued that the non-registered UK trademark involved remained protected under UK law during the Brexit transition period (February 1 to December 31, 2020).
It claimed that after this period, the proceedings would be irrelevant and Indo-European Foods' legal interest void.
The General Court confirmed that since the dispute arose within the transition period, the UK trademark retained EU protection despite Brexit—this meant the case remained relevant, preserving Indo-European Foods' legal interest.
The court rejected the EUIPO's claim that Indo-European Foods had no interest because the trademark could be converted to national applications.
It stressed that legal interest must exist from the start of the action until the final judgment.
Despite EUIPO’s argument, the General Court annulled the decision but did not support Indo-European Foods' application for opposition, stating the conditions for altering the decision were not met.
The EUIPO, supported by Germany, appealed to the CJEU to overturn the General Court’s judgment, claimed the case should be set aside and sought costs from Indo-European Foods. Indo-European Foods sought to dismiss the appeal and have EUIPO cover the costs.
Court’s decision
The EUIPO argued that the General Court made legal errors by deciding that Indo-European Foods still had an interest in annulling the decision after the Brexit transition period ended.
The court ruled that the General Court needed to independently assess whether the dispute's purpose and the applicant's interest in the case continued to exist.
The CJEU found that the General Court correctly examined whether the dispute's purpose existed and whether Indo-European Foods still had an interest in the case.
It confirmed that the General Court did not confuse the interest with the legality review and noted that the action or appeal must be able to benefit the party bringing it.
The court dismissed the EUIPO's arguments, affirming that the General Court correctly examined whether Indo-European Foods had a valid reason to proceed with the case, despite EUIPO's objections.
The CJEU upheld the General Court's findings, concluding it did not err in determining that Indo-European Foods retained its interest in the annulment of the decision despite the transition period's end, and the appeal was dismissed.
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