IP Cases & Articles

Ready to...GC dismisses PRET A DINER appeal

The General Court has provided guidance on the assessment of 'foreign' language marks from the English speaking public's perspective.

This case involved an opposition action brought by Pret A Manger Limited ('Pret') against K&K Group's (K&K) figurative EUTM application for PRET A DINER.

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The opposition was based on Article 8(5) EUTMR and relied on Pret's earlier figurative EUTM registration for PRET A MANGER as well as its earlier UK word mark PRET.

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K&K's European Union Trade Mark (EUTM) application covered a range of identical or closely similar goods and services to Pret's earlier trade marks.

The opposition was successful in its entirety finding that on the basis of Pret's reputation, K&K were likely to gain an unfair commercial advantage and benefit from the inevitable connection consumers would make between the marks.

Board of Appeal

The Board of Appeal concluded that the evidence filed substantiated that both the word mark PRET and the PRET A MANGER figurative mark enjoyed a reputation and goodwill in the UK. Further, as the signs both possessed a 'French feel', even if the consumer didn't know exactly what they meant, PRET A DINER would be perceived as a brand extension of the PRET A MANGER business.

General Court

K&K appealed the case and alleged that the evidence of use filed by Pret was not sufficient to show genuine use of the earlier figurative PRET A MANGER mark, along with a plea that the requirements under Article 8(5) had not been met.

The General Court found that the evidence was sufficient to prove genuine use of both the word mark PRET and PRET A MANGER figurative mark. Further, it found that Pret had established a significant reputation in the UK, which was a sufficient territory for the purposes of assessing reputation within the EU.

With regard to the risk that use without due cause might take unfair advantage of the distinctive character of the earlier marks, the General Court stated that the Board of Appeal was entitled to find there was such a risk in this case and that the PRET A DINER mark would be free-riding on the coat-tails of the earlier marks.

The General Court found that the risk could be substantiated by the fact that the structure of the PRET A MANGER mark was included in the PRET A DINER mark.

With regard to the Board of Appeal's reference to the 'French feel' of the marks, it stated this was not in itself decisive since the UK consumer may not know exactly what the marks both mean. However, it found the important fact in this case was that in view of the established reputation it seemed probable that the PRET A DINER mark could be perceived by the average consumer as being linked to Pret's business.

In these circumstances the General Court dismissed the appeal in its entirety.

In short

Even where consumers do not know what the trade mark means, they are likely to associate a particular element with one undertaking.

Use within the UK only can establish a reputation sufficient to support a European Union trade mark (EUTM).

Case details at a glance

Jurisdiction: European Union
Decision level: General Court
Parties: K&K Group AG and Pret a Manger (Europe) Ltd
Date: 30 November 2016
Citation: T-2/16
Full decision: http://dycip.com/pretadiner

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