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Wednesday, 18 April 2007

Sanctity of DONUTS preserved among non-English-speaking Spaniards

This morning, as promised by the IPKat, the Fourth Chamber of the Court of First Instance (CFI) of the European Communities gave its judgment in Joined Cases T‑333/04 and T‑334/04 House of Donuts International v OHIM, Panrico.

The facts were simple. House of Donuts applied to register its figurative HOUSE OF DONUTS signs (above and left) as Community trade marks in Classes 30, 32, and 42 (doughnuts, drinks, restaurant, cafeteria and catering services). Panrico opposed, citing a group of earlier Spanish word and figurative DONUT marks for the same goods and services and alleging a likelihood of confusion among doughnut eaters. The Opposition Division allowed the oppositions in decisions that were upheld by the Fourth Board of Appeal.

The CFI, dismissing House of Donuts' further appeal on the single ground that there was no basis upon which a Spanish consumer could think that goods and services bearing the respective marks could share a common origin, recited the usual authorities and then had this to say:

"48 ...[T]he Board of Appeal took the view that, since the word ‘donuts’ is not generic in Spain, the average consumer perceives it as distinctive in relation to pastries, beverages and related services. The Board of Appeal thus found that the distinctiveness of the term in issue was moderate, neither particularly high nor particularly low.

49 In order to challenge that assessment the applicant relies on circumstantial evidence which is neither admissible nor relevant nor of any probative value.

50 That is so, first, as regards the presence of the word in dispute in two bilingual dictionaries – Spanish-German and Spanish-English – a circumstance relied on for the first time before the Court of First Instance and, accordingly, inadmissible as evidence, and moreover inapt as a means of showing to what degree the average consumer was familiar with a word of foreign origin.

51 That is so, secondly, as regards the circumstance that the term ‘donuts’ is frequently found on the internet in association with the word ‘Spain’, which cannot serve to show that the word is generic for Spanish consumers, since such research can just as well highlight expressions which are distinctive as those which are not.

52 That is so, thirdly, as regards the trading name registration certificate issued by the Spanish intellectual property office which, although it classes the goods in question as ‘donuts’, appends to that classification an explanation of the meaning of ‘donuts’ in Spanish, thus precluding its use as evidence of lack of distinctiveness for the average consumer concerned.

53 Accordingly, account being taken of the degree of familiarity of the Spanish public with the English language, which is generally held to be low ..., the applicant fails to establish that the assessment undertaken by the Board of Appeal on the basis of the evidence available to it was incorrect, in so far as the word ‘donuts’ in the earlier marks was acknowledged to have a certain distinctiveness.

54 It follows that the Board of Appeal might well have used such distinctiveness as the basis for recognising that the word element ‘donuts’ – almost the sole constituent element of the earlier marks – is also a dominant element in the marks applied for, and as the basis for a comparison of the marks for the purposes of assessing the likelihood of confusion, by focusing its examination on ‘donuts’, the element common both to the earlier marks and to the marks applied for, and acknowledged as dominant in each of the marks under consideration.

55 In fact, if it were true that the distinctiveness of the common word element of the conflicting marks is particularly weak, the applicant would undoubtedly have been justified in maintaining that that word element was not dominant in the marks applied for, and that it was appropriate to accord at least equal importance to the other elements, both figurative and word – umbrellas, Arabic script, expressions in English – which make up the marks filed for registration. However, it follows from the foregoing considerations that, in the present case, it has not been established that the distinctiveness of the word ‘donuts’ is so very weak.

56 It follows that the arguments challenging the implications of attaching dominant character to that word element are irrelevant.

57 In fact, if it is accepted that the word ‘donuts’ is not in itself an inapt means of enabling the consumer to identify the origin of the goods covered by the mark – which is the very definition of the mark’s distinctiveness – it is obvious that that word dominates the overall impression which the average consumer would form when faced with the marks for which the applicant seeks registration: visually, since the other elements are peripheral; aurally, since none of the other elements is memorisable by the relevant public; and, lastly, conceptually, since the figurative and word adjuncts to the central word are essentially decorative.

58 Since the central and dominant element of the marks applied for is practically identical to that of the existing national marks, the only differences being the positioning of the word ‘donuts’ and the stylised lettering used, the assessment to that effect by the Board of Appeal cannot be criticised".

Right: Tiddles refused to confess he'd eaten all the doughnuts, but the rumours continued ...

The IPKat cannot but agree with this analysis. He feels that the real grouse of House of Donuts was that Panrico had monopolised a perfectly good English-language generic term and, by doing so, had thwarted the expansion of its own brand throughout Europe: but that is not not a ground for opposition (it's a bit of a Matratzen situation). Merpel says revenge is best tasted cold. Why doesn't House of Donuts register lots of Spanish generic terms in England, where the natives have little enough familiarity with their own language, let alone anyone else's, and wait to see if any Spanish traders, applying for highly allusive or borderline descriptive marks, get caught in their net?

Correct spelling of doughnut/donut here and here
Donat here
Make your own doughnuts/donuts here
Doughnuts/donuts and obesity here

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