The Judgement of the General Court of 30 November 2016, in the case K&K Group AG versus EUIPO and Pret A Manger (Europe) Ltd, analyses Article 8(5) of Regulation No 207/2009.

On 3 May 2012, K&K Group AG filed an application for registration the figurative sign

as an EU trade mark for Classes 29, 30, 35 and 43 of the Nice Agreement.

On 18 December 2012, Pret A Manger (Europe) Ltd, filed an application for a declaration of invalidity against the mark based on the earlier marks:

EU figurative trade mark  for Classes 29, 30 and 42; and the United Kingdom word mark ‘PRET’ for Classes 29, 30 and 43.

The Opposition Division and the Fifth Board of Appeal upheld the opposition in its entirety on the basis of Article 8(5) of Regulation No 207/2009 as in the light of the similarity of the signs, their reputation in the United Kingdom and the association existing between them, the holder of the international registration would gain an unfair commercial benefit from the inevitable connection that consumers would make with the earlier rights.

The applicant submitted that the Board of Appeal breached Article 8(5) of Regulation No 207/2009 by holding that the three conditions laid down by that provision had been met. Those three conditions are: that the marks at issue are identical or similar; that the earlier mark invoked in opposition has a reputation; the existence of a risk that the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable

Regarding the reputation of the earlier marks, the Court states that the evidence produced contained numerous statements by third parties concerning the nature and reputation of the opponent in the UK, including statements from high circulation national newspapers in the UK, advertisements, turnover and testimony, and two market studies. So that, the earlier signs were extremely well known in the UK and had become virtual household names.

In relation with the similarity of the signs, the Court compares the sings visually, phonetically and conceptually. The Court finds out that visually and phonetically there are at least a certain similarity between the signs because of the same terms ‘Pret’ and ‘A’ in the same order, capital letters and the slight stylization. Conceptually, the Court recalls that the earlier marks had no meaning for the public of the UK, and the contested mark could be associated with a person eating a meal or with an American restaurant because of the word ‘diner’. The applicant did not demonstrate the relevant English-speaking public would be able to understand the meaning of the terms ‘pret a manger’, ‘pret’, or ‘pret a diner’, consequently the Board of Appeal did not err. In conclusion, even where there is some similarity, even faint, between the marks at issue, the Court must still, under Article 8(5), carry out a global assessment in order to determine whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the general reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public.

Finally, concerning unfair advantage, the Court find that given the image of the marks with a reputation or the characteristics which they project, there is a risk that the goods and services covered by the mark applied for may take unfair advantage of the efforts and investments made by the holder of the earlier marks. The applicant’s mark would thus be free-riding on the coat-tails of the earlier signs, with the marketing of its own goods and services being facilitated by the association with the PRET or PRET A MANGER trademarks.

Consequently, the Court dismissed the action in its entirety.