Judgment of the General Court (First Chamber) of 14 December 2012 — Bimbo v OHIM — Grupo Bimbo (GRUPO BIMBO)

(Case T‑357/11)

Community trade mark — Opposition proceedings — Application for figurative Community trade mark GRUPO BIMBO — Earlier national word mark BIMBO — Relative grounds for refusal — Mark with a reputation — Article 8(5) of Regulation (EC) No 207/2009

1.                     Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Link between the marks (Council Regulation No 207/2009, Art. 8(5)) (see paras 29, 30)

2.                     Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Taking unfair advantage of the distinctive character or repute of the earlier mark — Figurative mark GRUPO BIMBO and word mark BIMBO (Council Regulation No 207/2009, Art. 8(5)) (see paras 35, 46-51)

3.                     Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage (Council Regulation No 207/2009, Art. 8(5)) (see paras 37, 43)

4.                     Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see para. 38)

Re:

ACTION brought against the decision of the First Board of Appeal of OHIM of 14 April 2011 (Case R 1272/2010-1), relating to opposition proceedings between Bimbo, SA and Grupo Bimbo, SAB de CV.

Operative part

The Court:

1. Annuls points 1, 3 and 4 of the operative part of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 14 April 2011 (Case R 1272/2010‑1), relating to opposition proceedings between Bimbo, SA and Grupo Bimbo, SAB de CV;

2. Orders OHIM to pay the costs.