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Wednesday, 10 October 2012

Bimbo trade mark or bimbo consumers?

Kat doughnut
This morning the General Court of the European Union delivered another judgment involving trade marks, doughnuts and, apparently, also bimbos. This was case T-569/10 Bimbo SA v OHIM, in which the General Court confirmed that there was likelihood of confusion between the word marks BIMBO DOUGHNUTS and DOGHNUTS.

Background
In 2006 Bimbo filed an application with OHIM for registration of the word mark BIMBO DOUGHNUTS as a Community trade mark in Class 30 of the Nice Agreement, in relation to ‘pastry and bakery products, specially doughnuts’. 
In 2007 Panrico, the intervener, filed a notice of opposition pursuant to what is now Article 8(1)(b) and Article 8(5) Regulation No 207/2009, based on a number of earlier national and international word and figurative trade marks. In particular, the Spanish word mark DOGHNUTS had been already registered for goods within Class 30 corresponding to the following description: ‘all kinds of confectionary and pastry products and preparations and products and preparations for sweets and confections; sugar, chocolate, tea, cocoa, coffee and substitutes thereof, vanilla, essences and products and preparations for making caramel cream and cakes, chocolate and sugar-based foodstuffs, ices, candy, chocolates, round-shaped dough biscuits, chewing gum tablets and biscuits’. 
Kat dónut
In 2009 the Opposition Division allowed the opposition and the decision was later confirmed by the Fourth Board of Appeal of OHIM. Like the Opposition Division, the Board of Appeal merely compared the trade mark applied for with the earlier Spanish word mark DOGHNUTS. Among the other things, the Board of Appeal noted that ‘doughnut’ is an English word meaning a ‘ring-shaped small spongy cake made of dough’ and that such word does not exist in Spanish, where its equivalents are ‘dónut’ or ‘rosquilla’. Therefore, to the average Spanish consumer (excluding those who speak English or watch The Simpsons, adds Merpel), the word ‘doughnut’ would not describe the goods in question or their qualities and would not have any particular connotation in relation to them. Hence, taking account of the average distinctiveness of the earlier trade mark, the Board of Appeal concluded that there was a likelihood of confusion between BIMBO DOUGHNUTS and DOGHNUTS within Article 8(1)(b).

Today's ruling 
In assessing whether registration of BIMBO DOUGHNUTS would be contrary to Article 8(1)(b) of Regulation No 207/2009, the General Court pointed out that, since the earlier trade mark was a Spanish mark, likelihood of confusion had to be assessed by reference to the Spanish public.
The assessment of the alleged similarities between two trade marks requires more than taking just one component of a composite trade mark and comparing it with another mark, said the Court. Accordingly the comparison must be made by examining each of the marks in question as a whole.
Bimbo had argued that the trade mark it had applied for was dominated by the element ‘bimbo’, which is placed at the start of that mark and is itself a trade mark with a reputation in Spain, and that the word ‘doughnuts’ would be considered descriptive by the relevant public and, as such, would not retain its attention.
Looking for that mythological creature
known as the average 
EU consumer
The General Court disagreed, holding that, as the average Spanish consumer would not understand the meaning of the word 'doughnuts', such word would not be descriptive at all to the relevant public. In addition,
"Even if there were no likelihood of confusion on the part of the Spanish public that does understand the meaning of the word ‘doughnuts’, that fact alone would not be a ground for rejecting the opposition, since a large part of the Spanish public does not speak English and will thus not understand that word." 
In any case,
"As regards the applicant’s argument that the Spanish public will identify the word ‘doughnuts’ with the word ‘dónuts’, which is how the word is written phonetically in Spanish, the part of the relevant public which does not speak English will not realise, on seeing the word ‘doughnuts’, that ‘dónuts’ is the Spanish transcription of that word. It is thus not necessary in this case to decide whether the word ‘dónut’ is regarded by the Spanish consumer as a generic term denoting doughnuts, as the applicant maintains, or whether ‘dónut’ is regarded as denoting a trade mark with a reputation which belongs to the intervener, as the latter maintains."
As to the argument that the element ‘bimbo’ was dominant in the trade mark applied for because it is one of the best-known trade marks in Spain, the General Court held that 
"the mere fact that one element of a composite mark formed of two elements plays a more important role than the other does not automatically mean that the comparison between the marks at issue can be limited to considering the former element. Indeed, ... it is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of the dominant element. In this case, the ‘doughnuts’ element cannot be considered negligible in the overall impression created by the mark applied for. That would be the case even if the reputation of the element ‘bimbo’, on which the applicant relies, were accepted."
This said, the General Court found that the ‘doughnuts’ element of the mark applied for was not negligible and must be taken into account in the comparison of the trade marks at issue. As a consequence, despite the fact that the first part of the applicant's trade mark was represented by the word 'bimbo' and consumers generally pay greater attention to the beginning of a mark than to the end, 
When it comes to doughnuts,
it is impossible to distract or confuse Merpel
"since the second element of the trade mark applied for is almost identical to the earlier trade mark and since that element is longer than the first, the Board of Appeal was correct in concluding that there was an average degree of visual similarity between the marks at issue."
In light of the identical nature of the goods and the average degree of visual and phonetic similarity between the trade marks at issue, the General Court thus confirmed that there was a likelihood of confusion between BIMBO DOUGHNUTS and DOGHNUTS.

This Kat is not particularly impressed with this decision (which is in line with another trade mark ruling published yesterday and reported on The IPKat). Merpel (who's a keen consumer of pastry and bakery products, yet constantly on a diet) wonders whether, in assessing likelihood of confusion, the average EU consumer has increasingly come to resemble those mythological creatures nobody has ever seen but everybody is scared of ...

4 comments:

Anonymous said...

"Among the other things, the Board of Appeal noted that ‘doughnut’ is an English word meaning a ‘ring-shaped small spongy cake made of dough’"

Except, of course, it need not be ring-shaped. But, unlike other small spongy cakes, it must be fried.

Anonymous said...

Why did they want to include the word "doughnut" in the mark in the first place though?

Anonymous said...

Native English speakers will also know that 'doughnut' or 'donut' has another, colloquial and perjorative, meaning in English - that is someone who is, how shall I put it, 'intellectually challenged'. The phrase "What a donut!" is frequently heard in common usage.

The European trade mark regime has, yet again, proven (in my opinion the rot set in and can be traced back to LIMONCELLO) it has more donuts than KRISPY KREME !

Anonymous said...

I can guess only one reason that justify this decision: unpredictability leads to more lawyering, and in times of economic crisis the profession benefits.

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