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General court upholds opposition to Caffe Kimbo by Bimbo

In October 2003, Café do Brasil filed a Community trade mark application for Caffe KIMBO (logo) covering “coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle; yeast, baking powder, salt, mustard; vinegar, sauces; relish; ice”. In February 2005, Bimbo SA opposed the application based on a Spanish registration for BIMBO covering “cereals, milling industry, baking, pastry and starch” (in which it claimed it had a reputation) and its rights in the well known mark BIMBO (which it said was well known in Spain).

The distinction between the two rights is an important one. According to Community trade mark legislation and case law, the proprietor of an earlier trade mark registration or application which has an enhanced reputation is entitled, in certain circumstances, to prevent the registration of an identical or confusingly similar trade mark for not only identical or similar goods and services, but also for dissimilar goods and services. This is in stark contrast to a well known mark. The proprietor of a well known mark is only entitled to prevent the registration or use of an identical or confusingly similar mark for identical or similar goods and services. The protection does not extend to dissimilar goods.

BIMBO did not prove that it had renewed its Spanish trade mark registration and so the opposition was examined only in relation to its well known mark which meant that it could only prevent the use and registration of Caffe KIMBO for similar goods and services. OHIM’s opposition division upheld the opposition in relation to “flour and preparations made from cereals, bread, pastry and confectionery, ices, yeast and baking powder” only. Café do Brasil appealed this decision and the Board of Appeal overturned the decision in relation to “flour, confectionery, ices, yeast and baking powder”.

The Board of Appeal in coming to its decision found that the well known character of the BIMBO mark had only been evidenced in relation to packaged sliced bread and therefore it would only allow the opposition to succeed in relation to goods which were similar. In contrast to OHIM’s initial decision, the Board held that flour, yeast and baking powder, confectionery and ices were dissimilar and held that the application should proceed in relation to these goods.

BIMBO appealed this decision claiming that the Board of Appeal was not entitled to reconsider issues which had been definitively adjudicated on by OHIM and which had not been specifically appealed by the parties. It also claimed that Café do Brasil had accepted that BIMBO was well known for a broad range of services because it had not appealed the initial decision.

The General Court held that the Board was fully entitled to adjudicate on the existence and extent of the earlier rights in the dispute. It also held that even if Café do Brasil had expressly recognised that BIMBO was a well known mark, the Board of Appeal would not have been obliged to hold that the existence and extent of the right had been proven as such issues cannot be left to the free assessment of the parties.

The General Court therefore upheld the Board of Appeal’s decision.

Philippa Olden, Trade Mark Attorney in the Intellectual Property Group, said that “BIMBO’s case was severely weakened because it failed to substantiate and evidence both its earlier trade mark rights and its reputation properly. This case serves as an important reminder to all trade mark proprietors just how important it is to rely on the correct rights and put the right evidence forward”.