In case T-303/08, the General Court upheld the declaration for invalidity brought according to Article 52 (1) (c) read in conjunction with Article 8 (4) CTMR and the Board’s decision which found that the rules of passing-off prevented the following trademarks from coexisting in the UK, both used for rice:

 Earlier UK right          Invalid CTM     

It confirmed that the Board correctly applied the national law, in that the three conditions of passing-off were satisfied and with regards to both the invalidity applicant’s and CTM owner’s claims, specified its application in relation with CTM law.

As regards goodwill, while it results from national case-law that it must be established from the date the defendant commenced offering its goods or services, according to Article 8 (4), it is from the date of the application of the CTM. In that regard, the Board rightly found that the standard used to prove distinctiveness for registration of a mark is much higher than the one required to prove goodwill so the applicant did not need to provide a survey market concerning the level of knowledge of the earlier mark by the public. Then, although the market share was low, all the evidence combined proved sufficient goodwill above the de minimis threshold (which had been raised too high by the Cancellation division finding absence of goodwill).

Furthermore, the CTM was considered to be a misrepresentation of the earlier mark: the goods in question are identical, the signs both consist in essence of the “golden elephant” (“brand” being non distinctive) below a writing in Chinese and the representation of an elephant head, which considerable differences would be nonetheless be considered ornamental, and rather a variation of the earlier mark. The applicant needed not provide proof of specific instances of confusion as it may be useful but is rarely decisive. As regards the CTM owner’s argument that the Board did not take into account the peaceful co-existence of the brands on the market since 2003, it was rejected as it had been submitted for the first time before the GC.

Finally, no proof of actual damage is required, as in this case, it is sufficient that damage is likely, given the closeness of the parties’ business, the applicant would likely lose sales because its customers, who intend to buy its rice, would erroneously buy the CTM owner’s rice.

As regards the procedural pleas, the fact that a party became aware of its legal position in the course of a procedure (the invalidity applicant had seen a separate appeal rejected as inadmissible in a previous case –see order of 14 July 2008 T-300/08) cannot constitute a new matter or law of fact within the meaning of Article 48 (2) of the rules of procedure. Moreover, the Board did not infringe Article 73 (now Article 75) CTMR since the assessment of facts and act of decision-making does not violate the right of the parties to be heard and comment on all the facts and evidence.