Background to the dispute

On 14 June 2018, Hijos de Antonio Juan, S. L., filed an application for EU trade mark registration before the European Union Intellectual Property Office (EUIPO). The trade mark in respect of which registration was sought is the word sign DONAS DULCESOL for various foodstuffs, including pastry and confectionery products; pastries; biscuits; brioches and cakes.

The trade mark application was published in the Trade Marks Bulletin of the European Union No 150/2018 of 9 August 2018.  On 10 September 2018, the appellant, Bimbo Donuts Iberia, S. A., then known as Bakery Donuts Iberia, S. A., filed a notice of opposition against the registration of the mark applied for on the basis of its earlier Spanish word mark DONAS, designating the following goods: purees and dried pulses; bakery products, flour, cereals, semolina and tapioca in this class, starch for foodstuffs, malt, pasta, rice and yeast.

The ground relied on in support of the opposition was that provided for in Article 8(1)(b) of Regulation 2017/1001: ‘if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trademarks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’.

Decision of the General Court

Following the application filed by Hijos de Antonio Juan and in accordance with Article 47(2) and (3) of Regulation 2017/1001, EUIPO requested the appellant to provide proof of genuine use of the earlier mark relied on in support of the opposition. The appellant complied with the request within the deadline.

On 30 January 2020, the Opposition Division rejected the opposition in its entirety on the ground that the appellant had failed to prove genuine use of the earlier mark relied on in respect of the goods on which the opposition was based.

In March of the same year, the appellant filed an appeal with EUIPO against the Opposition Division’s decision, which was dismissed. In particular, it found that the appellant had failed to provide proof of genuine use of the earlier mark in respect of the goods for which that mark had been registered. On the other hand, it accepted that the appellant had proved genuine use of that mark in respect of ‘sponge pastries in the form of balls, glazed or covered with chocolate’, but rejected its claims to include this product in the categories of ‘bread products’ and ‘pasta’ covered by the earlier mark.

As regards ‘bread products’, the Board of Appeal found that they designate either ‘ordinary bread’ or ‘special bread’, and that there is a clear difference between those products and bakery products, even though they are manufactured in a similar way. For its part, the Community Office considers that pasta refers to the well-known products of Italian cuisine such as spaghetti, tagliatelle, penne and farfalle, and does not include the products for which the earlier trade mark DONAS had been used.

This shows the need for a correct wording of the list of goods and services when applying for a trade mark.

JUDGMENT OF THE GENERAL COURT (Fifth Chamber) of 1 September 2021. Case T-697/20.