K&K Group AG, filed an EUTM application for the figurative mark Pret A Diner (above left) in Classes 29, 30, 35 and 43. Pret A Manger (Europe) Ltd opposed the mark based on its earlier EU figurative trade mark PRET A MANGER covering goods and services in Classes 29, 30 and 42 and UK word mark PRET covering goods and services in Classes 29, 30 and 43 (above right), under Article 8(5) of Regulation 207/2009 on the grounds that the applied for mark would take unfair advantage of the earlier marks.
At first instance the Opposition Division upheld the opposition in its entirety on the basis of Article 8(5). It said that, bearing in mind the similarity of the signs, the reputation of the earlier marks in the UK and the association existing between the signs, the mark applied for would gain an unfair commercial benefit from the inevitable connection that consumers would make with the earlier rights.
The Fifth Board of Appeal upheld the Opposition Division’s decision. It said that the evidence adduced by Pret A Manger was sufficient to conclude that in the UK PRET and PRET A MANGER were brands associated with a definite reputation and goodwill. It also said that the marks were similar and that the mark applied for would take unfair advantage of the distinctive character of the earlier marks. Furthermore, the Board of Appeal said that the structure of the earlier mark PRET A MANGER was mirrored in the mark applied for and both of the marks had a ‘French feel’ to them even if the consumer did not know exactly what they might mean.
At the General Court, the applicant argued that the opponent rarely referred to the expression ‘pret a manger’, but rather used the word ‘pret’ alone. However, based on Pret A Manger’s evidence, which contained numerous newspaper articles, advertisements, turnover, testimonies and market studies, the General Court concluded that the mark Pret A Manger did enjoy a reputation in the UK. This was a sufficient territory for the purposes of assessing reputation within the EU.
The General Court also found that the marks were similar. It dismissed the applicant’s arguments that the ‘pret-a + word’ structure is frequently used and has meaning only when another word is added to it. It said that the relevant English-speaking public would be unable to understand the meaning of the French expressions to which the various signs refer.
As regards the risk that use without due cause of the mark applied for might take unfair advantage of the distinctive character or repute of the earlier marks, the General Court said that the Board of Appeal was entitled to find that there was such a risk in the present case. Given the reputation of the marks, there was a risk that the mark applied for would take unfair advantage of the efforts and investments made by Pret A Manger of the earlier marks. Therefore, the mark applied for would be free-riding on the coat-tails of the earlier marks.
The General Court said that the risk could be substantiated by the fact that the structure of the PRET A MANGER sign was included in the Pret A Diner sign. It held that the Board of Appeal’s reference to the ‘French touch’ was not in itself decisive, since it is stated clearly that the UK consumer may not know exactly what the PRET A MANGER or Pret a Diner marks mean. However, the important fact was that the reputation established made it possible to establish that it seemed more probable that the Pret A Diner mark could be perceived by the average consumer as being a trade mark which is linked to Pret A Manger.
Therefore, the appeal was dismissed, and the opposition upheld.