This morning, in Case C‑591/12 P, Bimbo SA v OHIM, Panrico SA, the Court of Justice of the European Union (CJEU) followed the Opinion of Advocate General Mengozzi and dismisssed an appeal which has had Anglophone doughnut-eaters sitting on the edge of their chairs in eager anticipation.
|This came up when the IPKat was searching for an|
illustration of Panrico's DOGHNUTS: does anyone
have a current DOGHNUTS piccie for us ...?
* the General Court confused the concepts of ‘distinctiveness’ and ‘wholly meaningless element’, on the one hand, and ‘independent distinctive role’, on the other: the term ‘role’ suggests that it is a concept that must be assessed in the light of the characteristics of the other components of the sign concerned [Merpel says, this sounds really grand and she wishes she'd thought of it first -- but she wonders what it really means].
* the General Court’s reasoning implied that any trade mark composed of two elements, one of which is was trade mark with a reputation and the other a trade mark with an average degree of distinctiveness, with no particular meaning for the relevant public, would be regarded as consisting of two components with an independent distinctive role. However, the average consumer usually perceives a trade mark as a whole, and it is only in particular cases that the CJEU has accepted that it is possible that a component of a composite mark may retain an independent distinctive role in the composite sign concerned.
* a finding that an element has an independent distinctive role may be based only on an examination of all the relevant factors of each case, which was not the case here.
* the notions of ‘unitary whole’ and ‘logical unit’, used by the General Court, did not appear in the case-law of the CJEU. If, by those notions, the General Court meant that the composite trade mark contained different ‘unconnected’ elements, that fact would not imply that those elements had an independent distinctive role.
No, no, no and no, said the CJEU, in a ruling that contained no new principles of Community trade mark law and which [quite rightly, many would say] was focused on whether what the General Court did was within the tramlines of CJEU jurisprudence on Community trade mark law than on what that law should be in a real world in which doughnuts are bought and sold and in which it takes eight years to get to the end of a dispute as to whether a doughnut vendor can use BIMBO DOUGHNUTS on its products in the confident knowledge that it has the protection of a trade mark. Ultimately, Bimbo's grounds of appeal were based more on what turned out to be issues of terminology with which the General Court expressed itself than with any genuine error of law.
If this is the best that we can do, muses the IPKat -- who has read and re-read the decision and still can't understand how a Spanish consumer would in reality confuse BIMBO DOUGHNUTS with DOGHNUTS -- maybe we are all a bunch of bimbos ...