Trade marks with a reputation and (dis)similarity of goods and services

Art. 8(5) EUTMR and Art. 9(2)(c) EUTMR provide that claims based on a trade mark with a reputation can be asserted irrespective of whether the goods or services of the opposing trade marks are identical or even similar. Nevertheless, the proximity of the respective goods and services can be the decisive factor in assessing whether a trade mark with a reputation is being infringed.

Goods or services can address completely distinct groups of consumers so that the trade mark with a reputation may be unknown to the public targeted by the contested trade mark (application). If so, it will not establish a link between the marks. Even if the relevant publics are identical or overlap, the goods and services may be so dissimilar that the later mark is unlikely to bring the earlier mark to mind.

Against this background, the General Court dealt with the question whether a trade mark enjoying a reputation for bread in Spain can successfully oppose a highly similar mark for bicycles and related goods in the recent judgment Bimbo v EUIPO - Bottari Europe (BimboBIKE) (case T-509/22).

Background

Bottari Europe Srl (‘Bottari’) filed an application for EU trade mark no. 018274340 for the following sign:

It covered goods and services in classes 3, 8, 9, 11, 12, 21, 28, and 35, mostly concerning bicycles and related goods and services.

Bimbo, SA (‘Bimbo’) filed an opposition based on its Spanish trade mark BIMBO, registered for goods in classes 5, 29, and 30, including ‘bread’, for which Bimbo claimed a reputation.

EUIPO’s Opposition Division upheld the opposition on the basis of a trade mark with a reputation (Art. 8(5) EUTMR), but only for the following goods:

• ‘Detergents; Soap; grease-removing preparations’ in class 3;
• ‘Drinking bottles; drinking bottles for sports’ in class 21; and
• ‘Scooters [toys]; tricycles for infants [toys]; scooters for kids; gloves for games’ in class 28.

The Board of Appeal (‘BoA’) dismissed Bimbo’s appeal. Bimbo appealed further to the General Court.

The General Court’s decision

The General Court dismissed Bimbo’s appeal. The parties agreed that the signs have a high a degree of visual and phonetic similarity and that the earlier mark’s degree of distinctiveness was average. It was also undisputed that Bimbo’s trade mark enjoyed a very strong reputation for bread in Spain.

The parties disagreed, however, on whether the relevant public established a link between the marks at issue, and whether Bottari’s mark took unfair advantage of, or was detrimental to, the earlier mark’s distinctiveness and repute. Bimbo argued that its trade mark enjoyed such a high reputation that it does not have to prove the aforementioned conditions for an infringement of Art. 8(5) EUTMR.

The General Court accepted that it is possible that a mark can have such an exceptionally high reputation that the probability of a future, non-hypothetical risk of detriment to the well-known mark, or of unfair advantage being taken of it by the later mark, is patently obvious. If so, there is no need to put forward and prove any other facts in order to establish a link, or to show one of the types of injury mentioned in Art. 8(5) EUTMR.

Such a strong reputation exists only where the mark is inherently very distinctive and recognised in practically every context. Bimbo’s evidence on the reputation of its trade mark was not deemed to reach this threshold because it concerned only bread or the food sector. Further, the evidence remained too general or too temporally limited to establish the public’s perception of the earlier mark in contexts other than regarding food.

Therefore, it was necessary to assess whether one of the types of injury mentioned in Art. 8(5) EUTMR was caused by the later mark, including whether a link existed between the marks in light of all the relevant factors (and not merely the strength of the earlier mark’s reputation).

The General Court affirmed the BoA’s conclusion that the relevant public will not establish a link between the marks. The decisive factor was that the goods and services covered by the later mark (essentially bicycles and related goods and services) were too far removed from bread.

The argument that all goods could be bought in supermarkets was rejected because the respective products are offered in very different departments, namely the bakery section as opposed to the sport or DIY departments. Also, while bread is an everyday consumer product, bikes and related goods are not. The General Court dismissed the appeal for these reasons.

Bimbo also contested the BoA’s decision on Bottari’s legal costs. The BoA ordered Bimbo “to bear the costs incurred by [Bottari] in the appeal proceedings amounting to EUR 550”. It relied on Art. 109 EUTMR. Art. 109(7) EUTMR provides that costs of legal representation (fixed at EUR 550 by Art. 18(1)(c)(iii) EUTMIR) are to be awarded, “irrespective of whether they have been actually incurred”.

Bimbo took issue on the ground that Bottari did not submit any observations during the proceedings before either the Opposition Division or the BoA. Bottari’s legal representative intervened only once before the Opposition Division in order to request an extension of time and she received all documents provided in the course of the proceedings.

The General Court held that Bottari’s participation, limited as it was, was still sufficient to support an order whereby Bimbo (as the losing party) is to reimburse Bottari’s representation costs. Such an order would be inappropriate only if the prevailing party had remained entirely passive throughout the proceedings before EUIPO.

Comment

In order to show that the reputation of a trade mark goes beyond the public targeted by the goods or services for which the trade mark is famous, evidence on collaboration with companies from different sectors can be useful. Also, other efforts to extend the brand beyond the sector for which it enjoys a reputation can show that consumers in other sectors are familiar with it, such as merchandising producs or sponsorships.

Regarding recovery of representation costs, EU trade mark applicants who wish to remain passive during opposition proceedings should at least instruct their legal representative to make one submission to EUIPO in which they simply request that the opposition be rejected. Such a short brief should be sufficient to obtain a cost award if the opposition is rejected.