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6 December 2016Trademarks

Pret A Manger succeeds in TM suit at Europe’s highest court

Sandwich shop chain Pret A Manger has emerged victorious in a trademark claim at Europe’s highest court.

On November 30, the Court of Justice of the European Union (CJEU) handed down the decision of K&K Group v EU Intellectual Property Office (EUIPO) and Pret A Manger.

The case stems from K&K Group’s application in May 2012 for an EU-based international trademark for the sign ‘Pret A Diner’. In December that year, Pret A Manger filed a notice of opposition.

Two years later, the opposition division upheld Pret’s opposition, finding that genuine use of the earlier marks ‘Pret’ and ‘Pret A Manger’ had been proved in respect of some of the goods and services.

In light of the “similarity of the signs, their reputation in the UK and the association existing between them”, the division found that K&K would “gain an unfair commercial benefit from the inevitable connection that consumers would make with the earlier rights”.

In November 2014, K&K filed a notice of appeal with the EUIPO. Nearly one year later, the Fifth Board of Appeal upheld the decision.

K&K had argued that the evidence adduced by Pret to show genuine use does not indicate the earlier mark to which it relates and that the board should have evaluated the proof of use separately for each mark.

Pret had been asked to demonstrate that the earlier trademarks had been put to genuine use in the EU between November 2007 and November 2012.

“Accordingly, the Board of Appeal was correct in finding that, while some evidence related to a period prior to the relevant period, many elements testified to use of the earlier trademarks between 10 November 2007 and 9 November 2012,” said the CJEU.

Second, K&K argued that the trademark ‘Pret A Manger’ doesn’t appear on the labels submitted—only the trademark ‘Pret’ does.

It added that the board should have questioned whether “the distinctive character of the earlier word mark was affected by that representation”.

According to K&K, the term ‘pret’ is not distinctive because of its descriptiveness and because the figurative element of the shape of a star appears in a dominant fashion.

But the CJEU held that, as correctly noted in the EUIPO case, “the word element in the Pret sign, and not the star—a common decorative element—on which that element was superimposed, was the dominant element of that sign”.

The appeal was dismissed and K&K ordered to pay costs.

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