The EUIPO Opposition Division has partially upheld the opposition filed by Mercadona, S.A. (Mercadona) against the trademark application filed by BIM Birlesik Magazalar Anonim Sirketi (BIM) for goods and services in classes 28, 29, 30, 31, and 32.
On June 3, 2025, Mercadona filed an opposition against the mixed trademark “File” filed by BIM. The trademark applied for consists of subtly stylized green letters accompanied by an illustration of a grocery’s bag full of food inside a circle. These elements also appear in the prior trademark cited by the opponent.
Mercadona argued that its trademark had acquired a reputation under Article 8(5) of the EUTM Regulation. It also submitted various documents demonstrating its well-known recognition: a comparative analysis of the trademarks in dispute, a study on logo recognition, a certificate attesting to the reputation of the Mercadona trademarks, previous decisions, press articles, and images of the facades of its stores and those of the applicant, among others.
Based on the evidence provided, it was concluded that the earlier trademark had been subject to a long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands. The market share and degree of recognition shown by the evidence, the various press references, as well as the national decisions, unequivocally showed that the prior trademark enjoyed a high degree of recognition and reputation among the public in Spain.
However, the Opposition Division considers that the earlier trademark does not enjoy a reputation for all the services for which it has been claimed. In this regard, it concludes that the MERCADONA trademark designates a supermarket chain; therefore, its reputation extends only to those services typically offered in supermarkets.
As for the comparison of the signs, the Opposition Division concluded that they were visually and conceptually similar to a low degree and phonetically different.
The Opposition Division proceeded to analyze the link between the signs, taking into account the strength of the previous mark reputation, the low degree of similarity between the signs, the fact that the disputed goods (with the exception of a few) may be sold at retail in the same physical locations where the services of the prior trademark are offered, and the fact that these goods and services are marketed to the general public. It concluded that a link existed between the application and the prior trademark for a significant portion of the public. Thus, it is reiterated that the high degree of reputation of the prior trademark can offset the lower degree of similarity between the signs.
There is evidence of detriment and unfair advantage of the reputation of the MERCADONA trademark; therefore, it is highly likely that the contested trademark could damage the reputation of the prior trademark, given the established link between them, the high degree of reputation of the prior trademark, the low degree of similarity between the signs, and the nature of the goods and services in question.
In light of the foregoing, the opposition filed by Mercadona based on the reputation of the prior trademark is partially upheld, and registration of the contested trademark is refused for all goods and services applied for, with the exception of the following: fishing tackle; artificial fishing baits; hunting and fishing lures in Class 28; and live animals; fertilized eggs for hatching in Class 31, as these are goods not typically found in a supermarket.
Subsequently, the Opposition Division proceeds to analyze whether there is a likelihood of confusion for the remaining goods. However, with regard to the goods in Class 28, there are no similarities, and with respect to the contested goods in Class 31, it is concluded that live animals are identical and that fertilized eggs for hatching are highly similar. The Opposition Division finds that, for these remaining goods, there is no likelihood of confusion with the earlier trademark due to the different overall arrangement of the signs and the distinction between their verbal elements.
The Division reiterates that the degree of similarity between the signs required under Article 8(5) of the EUTMR and Article 8(1)(b) is different, since in the former, the trademarks must be sufficiently similar for the public to establish a mental link between them, whereas in the latter, the degree of similarity between the signs must be such that it could give rise to a likelihood of confusion on the part of the relevant public. Consequently, the degree of similarity required by Article 8(5) of the EUTMR is lower than that required by Article 8(1)(b) of the EUTMR. Therefore, even in the presence of identical and highly similar goods, there is no likelihood of confusion on the part of the public with respect to fishing tackle; artificial fishing baits; hunting and fishing lures in Class 28 and live animals; fertilized eggs for hatching in Class 31.
For all of the foregoing reasons, the opposition is partially upheld.
EUIPO Opposition Division Decision No. B 3241026 of September 16, 2026