In the EU General Court’s decision Case T‑129/22 about the mark SIMBA/BIMBA. The General Court found “games and toys” are dissimilar to “gymnastic and sporting articles” because they are for different purposes.

The main reasons for the General Court’s decision are summarised as follows:

• The EUIPO and the Board of Appeal were correct to follow the previous General Court’s decisions BETWIN T–514/11 and BILLA T-524/18, both of which found “games and toys” dissimilar to “gymnastic and sporting items”.
  
  
• The fact that certain items, such as balls for children and balls for sports, fall within the broad “games and toys” category and the “gymnastic and sporting articles” category does not mean that “games and toys” are similar to “gymnastic and sporting articles”, since both categories are very general and broad.
  
  
• Although certain goods may be considered sporting articles as well as toys, the primary purpose of “games and toys” is to entertain whereas the primary purpose of “gymnastic sporting articles” is to train physical bodies. The fact that these goods may have the same purposes on some occasions does not mean that these two broad categories are similar.
   
• How these goods are used (the Opponent claimed that these goods are used in the same way, namely with feet, hands or by moving the body continually) is not enough to find the goods are similar.
  
  
• Although the Opponent took a lesson from the pervious cases BETWIN T-514/11 and BILLA T-524/18 and filed evidence to prove that the channels of sales of these goods could overlap, the General Court was clearly not impressed by such evidence. The General Court on its own initiative found that the goods at issue are manufactured and sold by specialised undertakings and companies.
  
  
• In Paragraphs 59-61, the General Court made its view very clear that the fact that broad categories of goods overlap with each other on certain specific goods does not lead to a finding that these broad categories of goods are similar. The General Court identified a number of previous General Court decisions to support this position. 
  
  

Points to Discuss

The General Court firstly upheld the EUIPO’s approach to follow the General Court’s previous decisions BETWIN and BILLA. 

The EUIPO Manual is clear that EUIPO is not bound by previous decisions, although the reasoning and outcome of the previous decisions should be duly considered. Each case must be assessed on its own merits, taking into account the parties’ submissions and the evidence submitted. The previous cases BETWIN and BILLA did not have much evidence in respect of the channels of sales (paragraph 35 of BETWIN T–514/11 and paragraph 51 of BILLA T-524/18). However, whilst such evidence was produced in this case, the General Court rejected this evidence and still followed the previous decisions BETWIN and BILLA.

The General Court rejected the Opponent’s evidence that “games and toys” and “gymnastic and sporting articles” could overlap on points of sales and channels of trade for various reasons. For example, the Opponent filed evidence that sporting clothing companies such as Adidas, Puma and Nike also sell mini balls or skipping ropes which could be categorised as toys.  The General Court rejected the evidence on the basis that these manufacturers are not known for the production of games and toys and selling mini balls or skipping ropes is not selling games.  The General Court also found that although certain manufacturers such as Schildkröt, Sport-Thieme and Hudora manufacture both sporting items and games, these companies are a “rare phenomena”. In its conclusion, the General Court found that all of these goods are manufactured by specialised undertakings and sold by specialised shops. 

Moreover, the General Court focussed on the primary purpose of “games and toys” and “gymnastic and sporting articles”.  This appears to be in line with the case law that it is the “intended” purpose of the goods that matters. 

Conclusion

The key reasoning of the General Court’s decision in this case appears to be that even if two broad categories overlap on certain specific goods and services, these two broad categories cannot be found similar straightaway off the back of this. What matters is the Canon criteria in which the primary/intended purposes play an important part.

This case also shows that EU institutes tend to follow previous decisions now. Previous decisions could be used as “silver bullets” if the parties are on the right side of the decisions. However, for parties on the other side of the decisions, submitting sound and compelling evidence is crucial.