# C_2013252EN.01001302.xml

| 31.8.2013 | EN | Official Journal of the European Union | C 252/13 |
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31.8.2013

EN

Official Journal of the European Union

C 252/13

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Appeal brought on 24 May 2013 by Bimbo, SA against the judgment of the General Court (First Chamber) delivered on 20 March 2013 in Case T-277/12: Bimbo, SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Case C-285/13 P)

2013/C 252/21

Language of the case: English

Parties

Parties

Appellant: Bimbo, SA (represented by: N. Fernández Fernández-Pacheco, abogado)

Appellant:

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs), Café do Brasil SpA

Other parties to the proceedings:

Form of order sought

Form of order sought

The appellant claims that the Court should:

| — | As the main plea, annul in part the judgment of 20 March 2013 refusing registration of Community Trademark 3 478 311‘Caffé KIMBO & design’ in respect of the following goods in class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, confectionery, ices; honey, treacles; yeast, baking-powder; salt, mustard; vinegar sauces (condiments); relish; ice’ and confirm the same judgment in so far as it rejected the community trademark application 3 478 311‘Caffé KIMBO & design’ in respect of ‘preparations made from cereals, bread, pastry.’ |
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As the main plea, annul in part the judgment of 20 March 2013 refusing registration of Community Trademark 3 478 311‘Caffé KIMBO & design’ in respect of the following goods in class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, confectionery, ices; honey, treacles; yeast, baking-powder; salt, mustard; vinegar sauces (condiments); relish; ice’ and confirm the same judgment in so far as it rejected the community trademark application 3 478 311‘Caffé KIMBO & design’ in respect of ‘preparations made from cereals, bread, pastry.’

| — | As a subsidiary plea, annul in part the judgment of the General Court, of 20 March 2013, refusing registration of community trade mark application number 3 478 311‘Caffé KIMBO & design’ for the following products of class 30 ‘flour, confectionery, ices, yeast and baking-powder’ and confirm the judgment in so far as it rejected the community trademark application 3 478 311‘Caffé KIMBO & design’ in respect of ‘preparations made from cereals, bread, pasty.’ |
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As a subsidiary plea, annul in part the judgment of the General Court, of 20 March 2013, refusing registration of community trade mark application number 3 478 311‘Caffé KIMBO & design’ for the following products of class 30 ‘flour, confectionery, ices, yeast and baking-powder’ and confirm the judgment in so far as it rejected the community trademark application 3 478 311‘Caffé KIMBO & design’ in respect of ‘preparations made from cereals, bread, pasty.’

| — | Order the defendants to bear the costs of the procedure. |
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Order the defendants to bear the costs of the procedure.

Pleas in law and main arguments

Pleas in law and main arguments

The present Appeal is based on the following grounds:

| — | Rule 19 IR (CE) 2868/95 (1).
  When assessing the likelihood of confusion between Community Trademark application 3.478.311 ‘Caffé KIMBO & Design’ and earlier Spanish registration 291.655 for BIMBO, both registered to cover goods in class 30, the earlier trademark was not taken into account as a registered trademark but as a well-known trademark.
  We submit that the Appellant duly proved the existence of the earlier registration which was and still is in force, despite the fact that no document showing renewal of the application was provided. |
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Rule 19 IR (CE) 2868/95 (1).

1

When assessing the likelihood of confusion between Community Trademark application 3.478.311 ‘Caffé KIMBO & Design’ and earlier Spanish registration 291.655 for BIMBO, both registered to cover goods in class 30, the earlier trademark was not taken into account as a registered trademark but as a well-known trademark.

We submit that the Appellant duly proved the existence of the earlier registration which was and still is in force, despite the fact that no document showing renewal of the application was provided.

| 3.2. | — | Articles 8.1, 8.2, 8.4, 8.5 / CTMR (EC) No 207/2009 (2). Art 6 bis Paris Convention.
  When assessing the likelihood of confusion between Community Trademark application 3.478.311 ‘Caffé KIMBO & Design’ and earlier Spanish registration 291.655 for BIMBO, both registered to cover goods in class 30, the earlier trademark was not taken into account as a trademark with reputation but as a well-known trademark.
  The Appellant proved that BIMBO is a trademark with reputation, referring t o Judgment of General Court ruling on Case T-357/11, dated 14 December 2012, which declares that BIMBO is a reputed Trademark.
  Both as a well-known and as a reputed trademark, the comparison between the goods shows a high likelihood of confusion, which was not taken into account, the General Court considering them different enough to avoid confusion between goods of the same nature, origin, destination and sales channels.
  A more accurate comparison should have determined that there exits a high risk of confusion and therefore should have resulted in the refusal of all goods of class 30, including, obviously, refusal of ‘flour, confectionery, ices, yeast and baking-powder’.
  Both as a well-known and as a reputed trademark, comparison between the signs shows a high risk of confusion. BIMBO has proved 92% of brand awareness, and a market share of 60%, and deserves special protection. Therefore CTM application 3.478.311 ‘Caffé KIMBO & Design’ should have been refused in its entirety for goods of class 30.
  Registration of CTM application 3.478.311 ‘Caffé KIMBO & Design’ will take unfair advantage of the distinctive character or the repute of the mark and is, or will be, detrimental to it. |
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3.2.

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Articles 8.1, 8.2, 8.4, 8.5 / CTMR (EC) No 207/2009 (2). Art 6 bis Paris Convention.

2

When assessing the likelihood of confusion between Community Trademark application 3.478.311 ‘Caffé KIMBO & Design’ and earlier Spanish registration 291.655 for BIMBO, both registered to cover goods in class 30, the earlier trademark was not taken into account as a trademark with reputation but as a well-known trademark.

The Appellant proved that BIMBO is a trademark with reputation, referring t o Judgment of General Court ruling on Case T-357/11, dated 14 December 2012, which declares that BIMBO is a reputed Trademark.

Both as a well-known and as a reputed trademark, the comparison between the goods shows a high likelihood of confusion, which was not taken into account, the General Court considering them different enough to avoid confusion between goods of the same nature, origin, destination and sales channels.

A more accurate comparison should have determined that there exits a high risk of confusion and therefore should have resulted in the refusal of all goods of class 30, including, obviously, refusal of ‘flour, confectionery, ices, yeast and baking-powder’.

Both as a well-known and as a reputed trademark, comparison between the signs shows a high risk of confusion. BIMBO has proved 92% of brand awareness, and a market share of 60%, and deserves special protection. Therefore CTM application 3.478.311 ‘Caffé KIMBO & Design’ should have been refused in its entirety for goods of class 30.

Registration of CTM application 3.478.311 ‘Caffé KIMBO & Design’ will take unfair advantage of the distinctive character or the repute of the mark and is, or will be, detrimental to it.

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(1)  Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark, OJ L 303, p. 1

1

(2)  Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, OJ L 78, p. 1

2

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