Protecting brands against imitators

Pret a Manger ( known as ‘Pret’) is one of the UK’s best known upmarket sandwich shop chains, and has been a client of Dehns for over 15 years.  Dehns has  created a global IP strategy to protect Pret’s  IP rights, while the company has expanded from a single store in High Holborn in 1986 to a global business with  a turnover  approaching  US$1 billion and more than 400 stores in countries such as the US, France, China and Hong Kong.

Over the last 15 years Roberto Calamita, Head of Trade Marks and Account Partner for Pret, has been heavily involved in protecting the rapidly expanding brand against imitators.

Issue

In 2012 the fact that a European trade mark application had been filed for the mark “PRET | A | DINER” was picked up by our watching service.

Solution

Roberto contacted Pret and, having discussed the application with them in detail and created a plan and strategy to oppose the application, filed a notice of opposition at EUIPO.

In 2014, the EUIPO’s Opposition Division upheld Pret’s opposition as a result of the “similarity of the signs, their reputation in the UK and the association existing between them”; the division found that the Applicant would “gain an unfair commercial benefit from the inevitable connection that consumers would make with the earlier rights”.

The Applicant appealed the decision at the EUIPO Board of Appeal, which proceedings Roberto successfully defended. The EUIPO Board of Appeal, in November 2015, held that the PRET A MANGER  brand is a household name and upheld the earlier refusal of registration of “PRET | A | DINER”.

The Applicant again appealed to the General Court of the European Court of Justice (CJEU). That appeal was again defended, with Roberto instructing leading IP barrister Michael Edenborough QC.

Result

On 30 November 2016, the General Court of the CJEU handed down its decision in favour of Pret, viz.  to dismiss the Appeal, with the Applicant ordered to pay Pret’s costs. 

At every stage of the opposition and appeal proceedings the Applicant had sought to dispute Pret’s evidence of use of its marks. Those arguments were essentially dismissed at all levels, with the General Court of the CJEU confirming the earlier decisions that use and reputation had been proven by Pret in relation to its PRET and PRET A MANGER marks.

With highly successful and rapidly expanding  global brands such as PRET A MANGER it is inevitable that third parties will attempt to get close to such brands.  The decision of the General Court of the CJEU is a victory not only for Pret but for brand owners in general in protecting hard earned goodwill in their brands.