Mar 29, 2016

Can a Child be a "BIMBO"? General Court Decides in Trademark Dispute

A Mexican company has had its application for an EU TM turned down on the basis that it had a descriptive meaning.

Background

In case T-33/15 Grupo Bimbo (in French and Spanish only) applied for EU TM BIMBO for goods in class 30 'Flour, bread and cereal preparations and products; products of pastry and biscuit.' The EU IPO (former OHIM) rejected the application on the grounds that the relevant Italian-speaking consumer would interpret the word "bimbo" as an indication of the target of the products, viz. children. The examiner held that the sign had a descriptive meaning that rendered it unfit to indicate commercial origin.

Appeal

Grupo Bimbo appealed on the basis that "bimbo" was not a word normally used to describe a child in Italian.  It relied on the fact that Italian regulations on product labelling provide that products intended for children must have labels indicating "per the infanza" or "per bambini" but not the word "bimbo".

It also relied on the seniority of its brand in Italy and added that it had been registered in Switzerland, Germany and the UK.

Finally the Court had recognised the reputation of the brand in Spain (Case T-357/11) and produced evidence of worldwide ranking of the brand.

Board of Appeal Decision

Referring to the Italian dictionary, the word "bimbo" was neither affectionate nor familiar, but was synonymous with "bambino" or "child" in Italian.  Further the age of the Italian brand BIMBO was not relevant, given that the EU IPO was not bound by decisions taken by national offices. Finally, as regard registrations of identical or similar marks, the examiner found that the EU IPO had to process applications under Regulation No 207/2009 and should not consent to the registration of a mark simply because previously it could have been accepted by ​​mistake when instead fell within the absolute grounds for refusal.

Finally, the Board found that the evidence did not demonstrate distinctiveness acquired through use of the mark applied for in the part of the EU where it was devoid, namely Italy.

General Court Decision

The General Court upheld the Board of Appeal decision.  It found that the goods covered by the mark are able to be consumed by children or adapted to be consumed by children therefore the mark would be perceived by the relevant public as clearly descriptive of characteristics of the products concerned. Moreover the mark was devoid of distinctive character.

Posted by: in: Case Law, News, Trade Marks

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