Bimbo vs BimboBike

On 24 May, the General Court of the European Union dismissed the appeal filed by the well-known Spanish bread brand Bimbo, against the EUIPO decision that allowed the registration of the EU trade mark Bimbo Bike by an Italian company.

The Opposition Division of EUIPO had indeed partially upheld Bimbo’s opposition and rejected the application for registration in respect of the goods in Classes 3, 21 and 28, but it had allowed registration for the other goods and services covered by the application (Classes 8, 9, 11, 12 and 35). Bimbo had appealed the decision of the Opposition Division, then (in the absence of favourable decision from the EUIPO’s Board of Appeal) had lodged a recourse at the General Court.

The GC’s judgment in this case confirmed the decision of the European office to allow the registration of the Bimbo Bike trade mark for certain goods related to the cycling sector. Bimbo invoked the infringement of Article 8(5) of Regulation 2017/1001, since, in its opinion, the new trade mark took advantage of the reputation of its Spanish trade mark.

It follows from the wording of article 8(5) that the application of that provision is subject to the following cumulative conditions: first, the signs must be identical or similar, second, the earlier mark must have a reputation and, third, there must be a risk that the use without due cause of the mark applied for would take unfair advantage of the distinctive character or the reputation of the earlier mark.

On the basis of those premises, Bimbo relied on the high degree of similarity between the signs and the likelihood of association linked to it, the reputation of the Spanish trade mark and the risk of damage to that reputation.

The General Court does not dispute the degree of similarity as defined by the Board of Appeal, which found that the sign applied for is visually and phonetically very similar to the earlier sign. Nor does it dispute the 'strong' reputation of the Bimbo mark in Spain, in relation to 'bread' in Class 30. However, the Court points out that evidence was missing to show that the Spanish mark was inherently highly distinctive and recognised in virtually all contexts – in other words, that it was a mark with an “exceptionally high reputation” (for such marks, case law automatically assumes that there will be a risk of detriment to the earlier mark or an unfair advantage). Bimbo’s strength of reputation for the goods in class 30 is not sufficient to automatically demonstrate the likelihood of a future risk of detriment to the earlier mark or of an unfair advantage gained by the mark applied for – this is something that Bimbo should have proven.

Moreover, the reputation of the earlier mark does not enable the relevant public to establish a link between the goods and services in question because they are goods which serve an entirely different purpose: 'The targeted public of each of the two marks can never be confronted with the other mark, so that it will not establish any link between those marks'. In the absence of such a link on the part of the public, the Court stated that the use of the later mark cannot amount to taking unfair advantage of, or being detrimental to, the distinctive character or the reputation of the earlier mark.

This case is an example of the fact that, in order to assess the risks of detriment, not only the degree of similarity of the signs and the strength of the reputation of the earlier mark must be taken into account, but also the degree of proximity between the goods and services in light of the relevant public and the degree of distinctiveness of the earlier mark.