Bimbo vs BimboBike - Little Mermaid case

Bimbo vs BimboBike

On 24 May, the General Court of the European Union dismissed the appeal filed by the well-known Spanish bread brand Bimbo, against the EUIPO decision that allowed the registration of the EU trade mark Bimbo Bike by an Italian company.

The Opposition Division of EUIPO had indeed partially upheld Bimbo’s opposition and rejected the application for registration in respect of the goods in Classes 3, 21 and 28, but it had allowed registration for the other goods and services covered by the application (Classes 8, 9, 11, 12 and 35). Bimbo had appealed the decision of the Opposition Division, then (in the absence of favourable decision from the EUIPO’s Board of Appeal) had lodged a recourse at the General Court.

The GC’s judgment in this case confirmed the decision of the European office to allow the registration of the Bimbo Bike trade mark for certain goods related to the cycling sector. Bimbo invoked the infringement of Article 8(5) of Regulation 2017/1001, since, in its opinion, the new trade mark took advantage of the reputation of its Spanish trade mark.

It follows from the wording of article 8(5) that the application of that provision is subject to the following cumulative conditions: first, the signs must be identical or similar, second, the earlier mark must have a reputation and, third, there must be a risk that the use without due cause of the mark applied for would take unfair advantage of the distinctive character or the reputation of the earlier mark.

On the basis of those premises, Bimbo relied on the high degree of similarity between the signs and the likelihood of association linked to it, the reputation of the Spanish trade mark and the risk of damage to that reputation.

The General Court does not dispute the degree of similarity as defined by the Board of Appeal, which found that the sign applied for is visually and phonetically very similar to the earlier sign. Nor does it dispute the 'strong' reputation of the Bimbo mark in Spain, in relation to 'bread' in Class 30. However, the Court points out that evidence was missing to show that the Spanish mark was inherently highly distinctive and recognised in virtually all contexts – in other words, that it was a mark with an “exceptionally high reputation” (for such marks, case law automatically assumes that there will be a risk of detriment to the earlier mark or an unfair advantage). Bimbo’s strength of reputation for the goods in class 30 is not sufficient to automatically demonstrate the likelihood of a future risk of detriment to the earlier mark or of an unfair advantage gained by the mark applied for – this is something that Bimbo should have proven.

Moreover, the reputation of the earlier mark does not enable the relevant public to establish a link between the goods and services in question because they are goods which serve an entirely different purpose: 'The targeted public of each of the two marks can never be confronted with the other mark, so that it will not establish any link between those marks'. In the absence of such a link on the part of the public, the Court stated that the use of the later mark cannot amount to taking unfair advantage of, or being detrimental to, the distinctive character or the reputation of the earlier mark.

This case is an example of the fact that, in order to assess the risks of detriment, not only the degree of similarity of the signs and the strength of the reputation of the earlier mark must be taken into account, but also the degree of proximity between the goods and services in light of the relevant public and the degree of distinctiveness of the earlier mark.

Danish Supreme Court acquits Berlingske in Little Mermaid case

On 17 May 2023, Denmark’s Supreme Court ruled in favour of the Danish newspaper Berlingske, overturning the rulings of the two lower courts.

The newspaper and the heirs of the artist behind the famous Copenhagen statue had been engaged in a long court war that has now culminated in the acquittal of its chief editor.

The legal battle began in May 2019, when the Berlingske newspaper published a caricature of the famous statue on the front page of its "Opinion" section. The drawing, which was captioned "Evil in Denmark", depicted the Little Mermaid with a zombie-like face. Underneath the drawing was a reference to a newspaper article on the debate culture in connection with the 2019 election campaign. In April 2020, Berlingske published an article in the third section of the newspaper that included a picture of the Little Mermaid with a face mask. The article referred to a research project on the relationship between fear of the coronavirus and political obedience.

The sculptor's heirs sued the publisher of the Danish newspaper for copyright infringement over the sculpture and were successful in the two lower courts. The reason for this success is that the parody exception to copyright is not explicitly stated in Danish law. However, the Supreme Court clarified that Danish copyright law "is governed by a parody principle based on a common Danish and Nordic signature tradition, supported by the legislative history of the Copyright Act and case law".

Furthermore, it stated that the concept of parody must be understood in accordance with EU law. The judgment refers to the case law of the Court of Justice of the European Union, in particular Case C-201/13 ("Deckmyn case"), in which the European Court ruled on the content of the EU law concept of parody. The judgment in this case specifies that the essential characteristics of a parody must, on the one hand, evoke an idea of a pre-existing work while being visibly different from that work. On the other hand, it must be an expression of humour and mockery. This interpretation is intended to preserve a fair balance between the rights and interests of authors and the freedom of expression of the user of a protected work. The Danish court adds that one of the characteristics of parody is that it generally serves a purpose unrelated to the original work.

Consequently, the Danish Supreme Court denied copyright infringement in both cases. As regards the photography, it considers that the use of the Little Mermaid did not go beyond the purpose of the article. In the case of the drawing, it makes it clear that it is a caricature of the Little Mermaid for a purpose totally unrelated to the original work.

Tom Jensen (the newspaper’s chief editor), upon hearing the verdict, declared that it was "a happy day for all the media in Denmark".