From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 8 May 2014

Doughnuts, rolls (well, roles) and a half-baked set of legal principles

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.

To refresh readers' memories, in May 2006 Bimbo applied to register as a Community trade mark the word sign BIMBO DOUGHNUTS. The goods for which registration was sought were, unsurprisingly “pastry and bakery products, specially doughnuts” (Class 30).  Panrico opposed, citing a number of earlier national and international word and figurative trade marks, including the Spanish word mark DOGHNUTS, registered for “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 [but not 'doughnuts' notes Merpel]”, also in Class 30. Said Panrico, there was a likelihood of confusion under Article 8(1)(b) of Regulation 207/2009 on the Community trade mark, plus a "without due cause" objection under Article 8(5) which does not appear again in this narrative.

The Opposition Division allowed the opposition and its decision was upheld by the Fourth Board of Appeal. The Board of Appeal noted that “doughnut” was an English word meaning a “ring-shaped small spongy cake made of dough” but, since that word did not exist in Spanish (where its equivalents are “donut” or “rosquilla”), the Board concluded that, for the average non-English-speaking Spanish consumer, the word “doughnut” described neither the goods in question nor their qualities, and had no particular connotation in relation to them. DOGHNUTS would thus be perceived as a foreign or fantasy term by most consumers.  Since the marks were similar and their respective goods identical,  likelihood of confusion was the result. A further appeal to the General Court received short shrift so there was nothing for it but for Bimbo to appeal further to the CJEU.

This came up when the IPKat was searching for an
illustration of Panrico's DOGHNUTS: does anyone
have a current DOGHNUTS piccie for us ...?
Before the CJEU Bimbo raised the following arguments:

* 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 ...

1 comment:

Anonymous said...

Found an image of doghnuts here on Pinterest, amongst Panrico's other brands: http://www.pinterest.com/pin/266345765432585222/

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