In Bimbo, SA v OHIM  T-277/12, the EUGC has upheld a decision of the Board of Appeal of the Office for the Harmonization of the Internal Market (OHIM), allowing a Community trade mark (CTM) application for the figurative mark CAFFE KIMBO to proceed to registration in relation to a limited scope of goods. The General Court confirmed that while the signs at issue were similar, the opposition could only succeed in relation to those goods for which the prior mark BIMBO was well known.
Café do Brasil SpA filed a CTM application for the figurative mark CAFFE KIMBO covering, amongst other goods, “coffee, tea, cocoa, sugar, rice, tapioca, sago coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacles; yeast baking-powder; salt, mustard; vinegar sauces (condiments); relish; ice” in Class 30. Bimbo brought an opposition under Article 8(1)(a) and (b) of the CTM Regulation 207/2009/EC on the basis of its prior Spanish word mark for BIMBO covering “cereals, milling industry, baking, pastry and starch” in Class 30. Bimbo also claimed a reputation in respect of these goods, arguing that BIMBO was well-known in Spain in respect of those goods within the meaning of Article 8(5).
The opposition based on the earlier Spanish trade mark was rejected because Bimbo had not provided proof of its renewal within the time limit set by OHIM. The assessment therefore had to be carried out on the basis of the earlier, unregistered right for BIMBO, which Bimbo claimed was well known in Spain.
The opposition division upheld the opposition in respect of parts of the goods at issue, namely, in relation to “flour and preparations made from cereals, bread, pastry and confectionary, ices; yeast, baking-powder”. On appeal by Café do Brasil, the OHIM Board of Appeal annulled part of the decision. Bimbo’s evidence showed that the BIMBO mark was only well known in Spain for packaged sliced bread. Accordingly, the OHIM Board of Appeal rejected the application in relation to “preparations made from cereals, bread and pastry” only. Bimbo appealed to the General Court, arguing that there had been various procedural errors and that the assessment of a likelihood of confusion should have been carried out against goods other than only packaged sliced bread.
The General Court rejected the various procedural grounds raised and went on to uphold the OHIM Board of Appeal decision. The General Court confirmed that the signs at issue were similar overall, so the Board of Appeal had therefore been correct to find a likelihood of confusion in respect of the goods covered by the application. These were found to be similar to goods for which the well-known character of the earlier mark was established. The well-known character of the mark had been established only in respect of goods related to “packaged sliced bread”. Consequently, the opposition had to be upheld in relation to “preparations made from cereals, bread and pastry”.
With respect to “flour, confectionary, ices, yeast and bakingpowder”, the General Court found that the Board of Appeal had been correct to conclude that these goods were dissimilar to “packaged sliced bread” covered by the earlier mark because they had a different nature, purpose and method of use. There was accordingly no likelihood of confusion in respect of those goods.
The decision serves as a reminder of the importance of ensuring that all evidence pertaining to an opponent’s case, including the subsistence of earlier rights, is put forward in a timely manner. Although Bimbo was partially successful in its opposition proceedings, the evidence submitted could only demonstrate that its mark was well known in relation to a very limited number of goods. If Bimbo had submitted evidence that its Spanish registration was still valid and subsisting, it would have been able to rely on a broader range of earlier goods and may have accordingly been able to successfully remove further goods from the specification of the opposed mark.