Grupo Bimbo loses before General Court - but has last laugh

The General Court’s decision in Bimbo SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-357/11, December 14 2012) concerns a long-standing feud between Spanish company Bimbo SA and Mexican company Grupo Bimbo SAB de CV.

Bimbo Mexico is the largest baking company in the world; it owns, among others, consumer-goods giant Sara Lee. In 1964 Bimbo Mexico established the Spanish company, which introduced sliced bread into the country. Many people in Spain still refer to sandwich bread as 'pan Bimbo' (Bimbo bread).

The Spanish company was sold in 1978 along with the immensely valuable BIMBO trademark, which has no negative connotations in the Spanish language. For over 30 years, the two companies have operated independently using identical brands.

The case at hand refers to the appeal filed by Bimbo Spain against the decision of the First Board of Appeal of OHIM, which found that there was no likelihood of confusion between the figurative mark GRUPO BIMBO, depicted below, and the earlier Spanish word mark BIMBO in respect of certain goods and services in Classes 5, 31, 32, 35 and 43 of the Nice Classification.

The refusal to register the mark GRUPO BIMBO was sustained, however, in connection with the core goods in Classes 29 and 30 (including processed foodstuffs and industrial bread).  

The board concluded that the reputation of the earlier mark in Spain, which had been established only in connection with industrial bread, was clearly insufficient to conclude that use of the mark GRUPO BIMBO in connection with unrelated goods and services would be detrimental to the distinctive character and/or the repute of the earlier mark. Arguing that Bimbo Spain had failed to prove actual injury to its mark or a serious likelihood that such an injury would occur in the future, the board dismissed the appeal insofar it was based on Article 8(5) of the Community Trademark Regulation (207/2009).

The General Court thought otherwise. In view of the evidence put forward by Bimbo Spain of the exceptionally high awareness of the BIMBO brand in Spain, the court concluded that the probability of a future, non-hypothetical risk of detriment to the earlier mark was obvious. Therefore, Bimbo Spain was not required to prove any other fact to that end.

The court found that, by conducting an incomplete analysis of the reputation of the earlier mark, the board had infringed Article 8(5) of the regulation, to the extent that it had failed to assess how the use of the mark applied for could negatively affect the reputation of the earlier mark. In the court’s view, the board was wrong to dismiss the argument that the unfair advantage taken of the repute of the earlier mark stemmed automatically from its exceptionally high degree of fame, on the sole ground that Bimbo Spain had not submitted any evidence to substantiate this claim. The court annulled the contested decision, thus maintaining the refusal to register the challenged mark in respect of all the goods and services claimed.

Despite the unfavourable ruling, it looks like Bimbo Mexico had the last laugh: after decades of negotiations, it acquired Bimbo Spain a year before the judgment was handed down.

Celia Sueiras, Garrigues Abogados, Madrid