n its judgement of 18 March 2016, the General Court ruled that the wordmark “BIMBO” cannot be registered as a European Trademark. The Italian-speaking consumers of the Union would merely perceive the mark as indicating that the relevant products are intended for children  (Judgement T-33/15).

“BIMBO”

Background of the case

On 28 February 2013 a Mexican company, Grupo Bimbo, SAB de CV, filed an application for a European Trademark (EU TM) at the European Union Intellectual Property Office (EUIPO). The wordmark “BIMBO” was sought registered for “Flour, bread and cereal preparations and products; products of pastry and biscuit” in Class 30.

The examiner rejected the application on the grounds that the relevant Italian-speaking consumers would interpret the word “bimbo”, which is an Italian word for “child”, as indicating that the products are intended for children. The wordmark was thus not considered to be capable of indicating the commercial origin of the products in question.

Grupo Bimbo appealed the examiner`s decision and argued that the mark, being a recognized brand worldwide, had acquired distinctiveness through use. Furthermore, they stated that the word “bimbo” was normally not used to designate a child in Italian and that the Italian rules on product labelling only provided that products for children should be labelled with the reference “per línfanca” or “per bambini”, not the term “bimbo”. Grupo Bimbo also made reference to the seniority of its brand “BIMBO” in Italy and that the mark was successfully registered in Switzerland, Germany and the UK. Lastly, Grupo Bimbo argued that the Court had previously recognised the reputation of the “BIMBO” brand in Spain (in Case T-357/11).

By decision of 19 November 2014, the Second Board of Appeal (BoA) dismissed the appeal as they found that the mark in question was descriptive and not distinctive in Italy.

The decision of the General Court

 The General Court dismissed Grupo Bimbo`s action and upheld the decision of the Board of Appeal.

First of all, the General Court confirmed that the existence of absolute grounds for refusal must be assessed in connection with the Italian–speaking consumer of the Union.

The General Court noted that even though the term “bimbo” is not generally used in Italy to describe or designate the relevant goods in Class 30, the Italian-speaking consumers will interpret the word “bimbo” to refer to the recipients of those products as the goods in question are suitable for consumption by children. Thus, the wordmark was found to be descriptive of the characteristics of the products concerned.

The General Court stated that it is sufficient that one of the possible meanings of the word designates characteristics of the goods in question, meaning that the Italian understanding of the wordmark rendered the mark from being registered in the whole Union.

The General Court further rejected the arguments concerning the already existing Italian, Swiss, English and German registration for the wordmark “BIMBO”. They reminded that the trademark regime of the Union is an autonomous system where EUIPO is not bound by any national decision.

Furthermore, the Court noted that the similar marks which were accepted earlier were either different marks or registered for different goods and services. Either ways, the Court said that the possibility of registering a sign as a Community trade mark must in each case be assessed solely on the basis of the Trademark Regulation.

Lastly, the General Court concluded that Grupo Bimbo had not successfully proven that the mark had acquired a distinctive character through use in Italy.