K&K Group AG, filed an EUTM application for the figurative
mark Pret A Diner (above left) in Classes 29, 30, 35 and 43. Pret A
Manger (Europe) Ltd opposed the mark based on its earlier EU
figurative trade mark PRET A MANGER covering goods and services in
Classes 29, 30 and 42 and UK word mark PRET covering goods and
services in Classes 29, 30 and 43 (above right), under Article 8(5)
of Regulation 207/2009 on the grounds that the applied for mark
would take unfair advantage of the earlier marks.
At first instance the Opposition Division upheld the opposition
in its entirety on the basis of Article 8(5). It said that, bearing
in mind the similarity of the signs, the reputation of the earlier
marks in the UK and the association existing between the signs, the
mark applied for would gain an unfair commercial benefit from the
inevitable connection that consumers would make with the earlier
The Fifth Board of Appeal upheld the Opposition Division's
decision. It said that the evidence adduced by Pret A Manger was
sufficient to conclude that in the UK PRET and PRET A MANGER were
brands associated with a definite reputation and goodwill. It also
said that the marks were similar and that the mark applied for
would take unfair advantage of the distinctive character of the
earlier marks. Furthermore, the Board of Appeal said that the
structure of the earlier mark PRET A MANGER was mirrored in the
mark applied for and both of the marks had a 'French feel'
to them even if the consumer did not know exactly what they might
At the General Court, the applicant argued that the opponent
rarely referred to the expression 'pret a manger', but
rather used the word 'pret' alone. However, based on Pret A
Manger's evidence, which contained numerous newspaper articles,
advertisements, turnover, testimonies and market studies, the
General Court concluded that the mark Pret A Manger did enjoy a
reputation in the UK. This was a sufficient territory for the
purposes of assessing reputation within the EU.
The General Court also found that the marks were similar. It
dismissed the applicant's arguments that the 'pret-a +
word' structure is frequently used and has meaning only when
another word is added to it. It said that the relevant
English-speaking public would be unable to understand the meaning
of the French expressions to which the various signs refer.
As regards the risk that use without due cause of the mark
applied for might take unfair advantage of the distinctive
character or repute of the earlier marks, the General Court said
that the Board of Appeal was entitled to find that there was such a
risk in the present case. Given the reputation of the marks, there
was a risk that the mark applied for would take unfair advantage of
the efforts and investments made by Pret A Manger of the earlier
marks. Therefore, the mark applied for would be free-riding on the
coat-tails of the earlier marks.
The General Court said that the risk could be substantiated by
the fact that the structure of the PRET A MANGER sign was included
in the Pret A Diner sign. It held that the Board of Appeal's
reference to the 'French touch' was not in itself decisive,
since it is stated clearly that the UK consumer may not know
exactly what the PRET A MANGER or Pret a Diner marks mean. However,
the important fact was that the reputation established made it
possible to establish that it seemed more probable that the Pret A
Diner mark could be perceived by the average consumer as being a
trade mark which is linked to Pret A Manger.
Therefore, the appeal was dismissed, and the opposition
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1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
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