European Union: The General Court Sheds Light On The Notion Of ‘Detriment To A Trademark's Reputation'

Article 8(5) of Regulation (EU) 2017/1001 on the European Union Trademark (the "EU Trademark Regulation") provides that claims based on a trademark with a reputation can in principle be made irrespective of whether the goods or services covered by the contested trademark application are dissimilar to those for which the earlier, reputed trademark has been registered. This provision thus confers an extended form of protection for reputed trademarks, whereby, unlike the double identity and the likelihood of confusion grounds, its application is not necessarily conditional upon a finding of identity, or at least some similarity, between the goods or services at issue.

Notwithstanding this, case-law has maintained that the goods and/or services covered by the respective trademarks remain relevant considerations and their degree of proximity can be a determining factor when assessing whether detriment would be caused to a reputed trademark, allowing for the application of Article 8(5). In that regard, the General Court of the EU (Second Chamber) in its recent judgement Bimbo v. EUIPO – Bottari Europe (Case T-509/22), specifically dealt with the question of whether a trademark that enjoys a reputation in Spain for bread and foodstuffs could successfully oppose a highly similar trademark covering unrelated goods, such as bicycles and sporting goods.

Background of the Case – Decisions of the EUIPO Opposition Division & of the EUIPO First Board of Appeal

A Spanish entity operating under the name 'Bimbo SA' (the "Applicant") filed an action before the General Court (Second Chamber) (the "Court"), seeking the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (the "EUIPO") of 16 June 2022 (Case R 2110/2021-1).

The Applicant had originally filed an opposition against an EU trademark application submitted by Bottari Europe Srl (the "Respondent") for the sign 'BimboBIKE' covering goods and services in Nice¹ Classes 3, 8, 9, 11, 12, 21, 28, and 35, mostly concerning bicycles and related goods and services. The Applicant had based its opposition on its Spanish trademark 'BIMBO', which was registered in Nice Classes 5, 29, and 30, and for which it had acquired a strong reputation in Spain for bread and foodstuffs in general. The EUIPO Opposition Division partially upheld the Applicant's opposition, on the basis of its earlier trademark being found to have a reputation within the meaning of Article 8(5) of the EU Trademark Regulation, and refused registration of the contested trademark 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.

Registration of the contested trademark was however allowed in respect of the other goods and services covered in the application such as bicycles, mountain bikes, and various bicycle accessories in Class 12.

The Applicant appealed, and although the First Board of Appeal of the EUIPO had duly noted that there was a high degree of visual and phonetic similarity between the two signs, "BimboBIKE" and "BIMBO", it also found that the Applicant had failed to demonstrate a link between the goods or services at issue, and further considered that the goods and services covered by the Respondent's EU trademark application were too dissimilar from the goods in respect of which the Applicant's earlier mark had acquired a reputation.

Accordingly, the First Board of Appeal dismissed the Applicant's appeal, and the Applicant appealed further to the General Court.

The General Court's Judgement

The Applicant claimed before the General Court that the contested trademark infringed Article 8(5) of the EU Trademark Regulation, as its use would take unfair advantage of, or be detrimental to, the reputation of its own earlier trademark.

According to this provision, upon opposition by the proprietor of a registered earlier trademark, the trademark applied for shall not be registered where it is identical with, or similar to, an earlier trademark. This applies irrespective of whether the goods or services for which it is applied are identical with, similar to, or dissimilar to those for which the earlier trademark was registered, where:

• in the case of an earlier EU trademark, the trademark has a reputation in the Union; or,
• in the case of an earlier national trademark, the trademark has a reputation in the Member State concerned; and
• where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.

Relevant EU judgements have also consistently held that in order to determine whether the use of the contested mark is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark, it is necessary to determine whether a link between the identical or similar marks will be established in the mind of the relevant public. In other words, whether the relevant public would associate the marks with each other, even if it does not confuse them².

According to the Applicant, the EUIPO Opposition Division and the Board of Appeal were incorrect to find that there was a link between the marks only with respect to some of the goods covered by the marks. The Applicant argued that, although not immediately identical or similar, the goods covered by the contested trademark (including bicycles, cycling, and sporting accessories) were all the same still intended for the same public, had the same distribution channels, and could be purchased in supermarkets at the same time as other everyday shopping items, including bread and foodstuffs.

The Court, however, dismissed the Applicant's claim and affirmed the Board of Appeal's conclusion that the relevant public will not establish a link between the marks. The decisive factor was its consideration that the goods and services covered by the later mark 'BimboBIKE' were too far removed from bread and other food products. The Court also rejected the argument that there was a link merely because the goods could be purchased in supermarkets, holding that they are each offered in very different departments or sections of a supermarket premises, namely the bakery section and sport departments. Moreover, the Court also explained that while bread is an everyday consumer product, bicycles and related goods are not. In fact, the Court went on to say that although the earlier mark had acquired a reputation, it is probable that it would not be known to the relevant public targeted by the later mark. Accordingly, the Court dismissed the appeal for these reasons, and held that the relevant public was not likely to establish a link between the marks. Consequently, without the likelihood of such a link arising, the Court did not feel the need to enter into the notion of "detriment".

Concluding Remarks

This judgement demonstrates that, despite the extension of Article 8(5) to dissimilar goods and services, their proximity can still be the decisive factor for assessing whether a reputed trademark is likely to be infringed in terms of that provision. As considered by the General Court in this case, the goods and services covered by the respective marks may nonetheless be so dissimilar and remote from one another that the later mark would be deemed as unlikely to cause the relevant public to call to mind the earlier mark, and consequently, to form a mental link between them. In the absence of such a link, Article 8(5) of the EU Trademark Regulation would not be capable of applying to such situations.

Footnotes

1. The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks.

2. Spa Monopole v. OHIM – Spa-Finders Travel Arrangements (SPA-FINDERS) 25 May 2005.

This article was first published in The Malta Independent on 06/09/2023.

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