OPPOSITION Nо B 3 103 488

Bimbo, S.A., C/ Josep Pla, 2‑B2 (Torres Diagonal Litoral), 08019 Barcelona, Spain (opponent), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Bibiana Dojčár, Vyšné Hágy 33, 05984 Vysoké Tatry, Slovakia (applicant), represented by Alžbeta Calpaš Mordinová, Stromová 9/a, 83101 Bratislava, Slovakia (professional representative).

On 10/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 103 488 is partially upheld, namely for the following contested goods:

Class 21: Household utensils for cleaning, brushes; tableware, cookware and containers.

2. European Union trade mark application No 18 096 701 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 096 701 for the figurative mark . The opposition is based on Spanish trade mark registration No 2 689 432 for the word mark ‘BIMBO’. The opponent invoked Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Spain.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 18/07/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent claimed reputation, namely:

Class 30: Coffee-based beverages and coffee milk-based beverages, milk powder, cocoa, chocolate, cereals, fruits, sugar, herbs or spices or its combinations; tea-based beverages, infusions; cocoa, cocoabased beverages, chocolate and chocolate powder extracts, granulated or liquid; sugar, rice, tapioca, sago, flour and preparations made from cereals, bread, cookies, cakes, pastry and confectionery, ices; honey, treacle; yeast, bakingpowder; salt, mustard, pepper, vinegar, condiments; fruit sauces, spices; herbs for drinks preparations; blends that mainly consists in herbs with dried fruits addition for beverages preparations; herbs extracts, not for medical use; ice.

The opposition is directed against the following goods:

Class 21: Household utensils for cleaning, brushes and brush-making materials; tableware, cookware and containers.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 19/11/2019 the opponent submitted the following evidence.

 Documents 2: copy of an opposition decision of 10/05/2010, B 1 295 718, stating that the mark ‘BIMBO’ is the leader in the industrial bread sector in Spain and a copy of an opposition decision of 28/01/2011, B 1 563 413, stating that the mark ‘BIMBO’ has a high recognition among the relevant public in Spain for bread. Additionally, in its submission of 19/11/2019, the opponent made reference to various decisions of the Spanish Patent and Trade Mark Office, in which the reputation of ‘BIMBO’ signs was recognised.

 Documents 3: copy of a ‘Diario Oficial de la Unión Europea’ containing a reference to a judgment of the General Court (14/12/2012, T–357/11, GRUPO BIMBO (fig.) / BIMBO et al., EU:T:2012:696), stating that the earlier mark ‘BIMBO’ has an extremely high degree of reputation in Spain in relation to industrial bread.

 Document 4: printout of 27/03/2019 of a Google search for the word ‘BIMBO’, which shows around 111 million results.

 Document 5: a certificate dated 08/03/2016 from the Financial Vice President of Bimbo Iberia, indicating the impressive value (several million euros) of the ‘BIMBO brand’ at the moment of the company’s acquisition and an even higher figure for the company’s subsequent annual intangible assets valuation.

 Document 6: various invoices from 2016-2018 confirming the opponent’s advertising expenditure and cooperation with various retailers in Spain, such as Champion, Coaliment and Caprabo. Some of the invoices contain the reference ‘Produccion BIMBO SC’ regarding products.

 Document 7: an overview of press articles from 2017 and 2018 in the Spanish media, such as Anuncios, Expansión, Diez Minutos, Qué me dices, Distribucion y Consumo, Gondola Digital, Financial Food, among others. The publications refer to the opponent as ‘one of the biggest organisations of the food sector in Spain and Portugal’. ‘Over its 50 years of history, it has maintained its leadership position due to the quality of its more than 100 products and the strength of trade marks such as Bimbo …’ ‘With innovation and health as its main values, its commitment is to deliver every day fresh, soft and delicious products to millions of homes.’ Grupo BIMBO is described as the biggest bakery in the world (Expansion/Catalunya, 14/03/2018). Moreover, the ‘Bimbo’ mark is referred to as one of the 10 most purchased brands of mass consumption products by Spanish consumers in the Brand Footprint report, developed by Kantar Worldpanel (Anuncios of 19/06/2017, InfoRetail 2017), and as the leading brand of bread in Spain. The ‘Bimbo’ trade mark was also ranked as one the most innovative brands in Spain in 2016.

 Document 8: document from a Spanish advertising company, ‘Optimum Media Direction SLU’, in Spanish, which certifies various campaigns carried out for Bimbo S.A.U. in different advertising media during 2013–2017 for significant amounts, ranging from several thousands to millions of euros per year. The titles of the marketing campaigns are given in the original document and the majority relate to ‘BIMBO’ trade marks, for example, ‘Bimbo – Accion suplemento Leo Messi’, ‘Total Bimbo exterior Abril 2013’, ‘Bimbo La Roja Mundial 2014’, ‘Bimbo - 50° aniversario’, ‘Bimbo – Burger Brioche’ and ‘Bimbo – 100% Natural Abril – Mayo 2017’.

 Document 9: researches performed by the company ‘Punto de Fuga’ analysing and reflecting on the results of some of the opponent’s product campaigns. These include, ‘Bimbo 100% natural’, ‘Bimbo sin corteza’, ‘Oroweat’, ‘Rustik Bakery’, ‘Thins’ and ‘Pan tostado 2017’, all dated 2017. Parts of the reports were translated by the opponent. From the translations, it can be ascertained that ‘Bimbo’ has a long history in the market and is one of the first brands that consumers remember with respect to soft bread commercials. Due to strong associations with the general bread category, ‘Bimbo’ is also the most well-known brand in the toasted bread category.

 Document 10: various studies of ‘Bimbo’ marks and their position in the sector.

o A list from ‘Superbrands’ showing the marks classified as ‘superbrands’ in 2016, including the mark ‘Bimbo’.

o ‘Brand Footprint 2015’ study by Kantar Worldpanel, in which ‘Bimbo’ appears as one of the 50 most chosen consumer brands in the world. In ‘Brand Footprint España 2015’, the ‘Bimbo’ mark appears in 10th position in the general ranking of mass consumption products and 7th position in the food sector. ‘BIMBO’ products are bought by more than 50 % of Spanish households (market penetration of more than 53 % in 2015).

o Study by ‘GfK’ (2016) entitled ‘Motivational map’, evaluating the ‘Bimbo’ brand in general, its various products and their position on the Spanish market. The report was partially translated by the opponent. According to the translation of page 59 of the report, consumers consider the ‘Bimbo’ mark as a leading brand, a quality reference, a pioneer brand and the expert in bread.

 Document 11: undated photographs of stands and shop shelves in different supermarkets with products bearing the ‘Bimbo’ mark, such as bread, toasted bread and hamburger buns.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a very strong reputation in Spain for bread.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources.

Brand rankings and trade mark studies performed by third parties, such as ‘Superbrands’, ‘Punto de Fuga’ and ‘GfK’ (documents 9 and 10), show that the ‘Bimbo’ mark is one of the most important brands in the food sector in Spain and is perceived by consumers as a leading brand for bread products. More than 53 % of Spanish households buy ‘Bimbo’ products. The press articles submitted by the opponent (document 7) refer to the opponent’s long history, the ‘BIMBO’ mark’s leading position in the bread sector, and mention that the ‘BIMBO’ mark is one of the 10 most purchased brands by Spanish consumers.

It’s high ranking among leading food brands, the opponent’s marketing expenditure and market position in the bread sector (confirmed by independent studies), together with various references in the press to the mark’s success, all unequivocally show that the mark enjoys a very high degree of recognition among the relevant public in relation to bread.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods for which reputation has been claimed. The evidence mainly relates to bread, whereas, there is little or no reference to the remaining goods. This is clear, for example, from the market position reports, press clips and advertisements, where only the former is mentioned.

b) The signs

BIMBO
Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark ‘BIMBO’. The protection of a word mark concerns the word as such. Therefore, contrary to the applicant’s argument, as long as it does not depart from the standard rules on capitalisation, it is irrelevant if it is written in upper- or lower-case letters. Moreover, as a word mark, it has no elements that could be considered dominant (visually more eye-catching) than other elements.

The verbal element ‘BIMBO’ has no meaning for the relevant public and is normally distinctive.

The contested sign is a figurative mark comprising a depiction of a baby’s head on the left-hand side of a verbal element ‘bimbou’, written in a lower-case handwriting style.

The depiction of the baby’s head and the verbal element ‘bimbou’ have no clear meaning related to the relevant goods and are, therefore, distinctive to a normal degree. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the letters ‘BIMBO’, which comprise the entirety of the earlier sign and are entirely contained in the contested sign’s verbal element. Moreover, they form its initial part, that is five out of six letters. The signs differ in the last additional letter ‘U’ of the contested sign’s verbal element, in its figurative element of a baby’s head and in its stylisation. However, contrary to the applicant’s opinion, the stylisation and colours of the contested sign will be perceived as decorative elements and, therefore, have a limited impact on its perception.

Therefore, the signs are visually similar to an above-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BIMBO’, comprising the entire earlier mark. The pronunciation differs in the sound of the last additional letter ‛U’ of contested sign, which is less conspicuous.

Therefore, the signs are aurally highly similar.

Conceptually, the earlier mark has no meaning while the contested sign conveys the concept of a baby’s head. Therefore, the signs are conceptually not similar.

The signs under comparison are similar to the extent that the earlier mark ‘BIMBO’ is entirely contained in the contested sign’s verbal element, ‘bimbou’.

c) The ‘link’ between the signs

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As regards the degree of similarity between the marks at issue, it is clear from the case-law that, the more immediately and strongly the earlier mark is brought to mind by the contested sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 67-69; 18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 44).

It must be taken into account that there are strong visual and aural similarities between the signs, because the earlier reputed mark ‘BIMBO’ is entirely contained in the contested sign’s verbal element ‘bimbou’.

The opponent’s mark ‘BIMBO’ has acquired a very strong reputation in Spain in relation to bread and is one of the 10 most purchased brands of mass consumption products.

Another factor to consider when assessing whether there is a ‘link’ between the signs is the relevant goods and services. The opposition is directed against various goods in Class 21. The contested household utensils for cleaning, brushes; tableware, cookware and containers are directed at the same general public as the opponent’s goods, for which reputation was proven. Moreover, they are sold through the same distribution channels, such as supermarkets. Even if these goods are displayed in different sections of the supermarket, the fact remains that they are frequently purchased together. Additionally, in households, some of the contested goods (tableware, cookware and containers) are used together with the opponent’s reputed goods, namely to store, serve or cook the opponent’s reputed bread.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark on goods such as household utensils for cleaning, brushes; tableware, cookware and containers, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs.

However, this is not the case for the remaining contested goods, namely brush-making materials. These are raw materials and unfinished goods directed at professionals in the brush-making industry.

The relevant consumer of the contested goods, even if they are professional, is likely to also use the opponent’s goods, since bread is used a lot and on a daily basis. However, as the Court has stated, ‘even if the relevant section of the public as regards the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public’ (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 49).

This is relevant to the present case, where a link could not be found between brush-making materials and the opponent’s bread, as these goods serve a totally different purpose and cover different needs. They have different natures, purposes, methods of use and distribution channels. Moreover, they are not in competition or complementary and they are produced by different companies.

When considering the goods at issue, it must be stated that not only are they not similar (as they do not coincide in any relevant factor), they also largely diverge. They belong to completely different market sectors, which are not related at all. They require different knowledge, technology and production methods. All these factors make it unlikely that the contested sign would remind the relevant consumers of the earlier mark.

Given that the goods in question largely diverge and that the opponent did not present any arguments justifying the improbable mental leap between brush-making material and bread, the Opposition Division concludes that no association will be made between the signs.

In summary, taking into account and weighing up all the relevant factors of the present case, it must be concluded that, when encountering the contested mark, the relevant consumers of household utensils for cleaning, brushes; tableware, cookware and containers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. This link, however, will not be established by the relevant consumers of brush-making materials.

Although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

 As a result of the established reputation of the trade mark ‘BIMBO’, the fact that the marks at issue are highly similar and the nature of the reputed goods (which could clearly be used by the same consumers in the same field as the applicant’s goods) means that use of the contested sign is extremely likely to take unfair advantage of the reputation and distinctiveness of the earlier trade mark. For instance, consumers familiar with the well-established ‘BIMBO’ trade mark could be confused into thinking that the contested sign is an extension of that trade mark into related goods. In this case, the applicant would benefit unfairly from the prestige and the quality brand image created by BIMBO, S.A.

 The misappropriation of the distinctiveness and repute of the earlier mark presupposes an association between the respective marks, which makes the transfer of attractiveness and prestige to the sign applied for possible. An association of this kind will be more likely in the following circumstances:

1. where the earlier mark possesses a strong reputation or a very strong distinctive character;

2. where the degree of similarity between the signs at issue is high;

3. where there is a special connection between the goods/services.

In the current case, all these circumstances are present, since (i) the trade mark ‘BIMBO’ enjoys a strong reputation and (ii) the signs are indeed highly similar.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

The goods for which protection is sought are household products of mass consumption that target average consumers. The goods for which reputation has been established (bread) target the same consumers.

As can be seen from the documents provided by the opponent, the earlier mark ‘BIMBO’ conveys an image of traditional and healthy but also innovative, market-leading products in the bread sector.

When used on the same market of mass consumption products, the contested sign will bring to the minds of the consumers the earlier reputed trade mark, and the qualities associated with the opponent’s goods can be easily attributed to those of the applicant. This may stimulate the sales of the applicant’s goods to an extent which may be disproportionately high in comparison with the size of their own promotional investment and, therefore, lead to the unacceptable situation where the applicant is allowed to take a ‘free ride’ on the opponent’s investment in promoting and building up goodwill for its mark.

In other words, the use of the contested mark would give the applicant an advantage in the marketing of its goods in that it may benefit from the reputation and image associated with the earlier mark to enhance sales of its own products.

On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the repute of the earlier trade mark and also to its distinctiveness.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods:

Class 21: Household utensils for cleaning, brushes; tableware, cookware and containers.

The opposition is not successful for the remaining goods, namely brush-making materials.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Angela DI BLASIO

Anna ZIÓŁKOWSKA

María del Carmen COBOS PALOMO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.