Author: Laetitia Lagarde (Studio Legale Jacobacci, Torino)
Case T-569/10 Bimbo v OHMI—Panrico (BIMBO DOUGHNUTS), General Court (Seventh Chamber), 10 October 2012
Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt028, first published online: March 21, 2013
The General Court upheld the likelihood of confusion between BIMBO DOUGHNUTS and the earlier Spanish mark DOGHNUTS, thus allowing a Spanish pastry maker to prevent its competitor from using the word ‘doughnut’ for its products, on the grounds that a large part of the Spanish public does not speak English and will perceive the similar element as a fantasy word.
According to Article 8(1)(b) of Council Regulation 207/2009 on the Community trade mark (CTMR), upon an opposition filed by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, due to the fact that it is identical or similar to an earlier trade mark and to the goods or services covered by the trade marks, there exists a likelihood of confusion by the public in the territory in which the earlier trade mark is protected.
Further, the fact that an element of a composite trade mark is in itself a trade mark with a reputation may play a part in the appraisal of the relative weight of the various components of the composite mark. Thus, if one element of a composite mark is itself a mark with a reputation, it may, by the same token, play a more important role in the composite mark.
However, 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 (see Case C-334/05 OHIM v Shaker  ECR I-04529).
The OHIM Opposition Division and the Board of Appeal (BoA) had upheld the opposition brought by Panrico (the ‘opponent’) against the CTM application filed by Bimbo, on the basis of Article 8(1)(b) CTMR.
The BoA noted that ‘doughnut’ was an English word meaning a ‘ring-shaped small spongy cake made of dough’. The word does not exist in Spanish, where its equivalents are ‘dónut’ or ‘rosquilla’. Thus for the average Spanish consumer (excluding those who speak English) the word ‘doughnut’ did not describe the goods in question or their qualities and did not have any particular connotation in relation to them: the earlier sign (like the applicant's mark) would be perceived as a foreign or fantasy term by most consumers.
Taking account of the average distinctiveness of the earlier trade mark, the BoA, in an overall assessment of the likelihood of confusion, concluded that owing to the average degree of visual and phonetic similarity between the signs, there was a likelihood of confusion on the part of the relevant consumers for all the goods at issue, which were found to be identical.
Bimbo appealed against the BoA decision which was dismissed by the General Court.
Neither party disputed that the goods concerned were identical in Class 30, since the ‘pastry and bakery products, specially doughnuts’ claimed for the applied-for mark were included in the category of ‘all kinds of confectionary and pastry products’ protected by the earlier trade mark.
Regarding the comparison of the signs, the applicant claimed infringement of Article 8(1)(b) CTMR relying on two arguments: (i) the word ‘doughnuts’ is descriptive of the goods in question and has no distinctive character, even for Spanish consumers. (ii) Further, BIMBO is one of the best known trade marks in Spain: since it was the only distinctive element of the applied-for mark, there was no likelihood of confusion with the earlier mark.
As to the first argument, considering the distinctiveness of the word ‘doughnuts’, the court rejected Bimbo's arguments and evidence regarding the level of English spoken and understood by the Spanish consumer. In its view the Spanish public generally has a low degree of familiarity with the English language (see Case T–104/01 Oberhauser v OHIM—Petit Liberto, 23 October 2002).
The applicant's argument that knowledge of English in Spain is steadily increasing, particularly among young people, did not refute the fact that, according to the fairly recent study submitted by the applicant itself, almost 50 per cent of Spaniards have no command of any foreign language.
Thus the part of the relevant public which did not speak English would not realize, on seeing the word ‘doughnuts’, that ‘dónuts’ was the Spanish transcription of that word. It was therefore unnecessary to decide whether the word ‘dónut’ was regarded by the Spanish consumer as a generic term denoting doughnuts, or whether ‘dónut’ was regarded as denoting a trade mark with a reputation which belongs to the opponent.
The opponent had produced a survey of Spanish consumers which demonstrated that more than 80 per cent of the interviewees stated that they did not know the meaning of the word ‘doughnuts’. The applicant criticized that survey on the grounds that the researcher only showed the word to the interviewees but did not speak it aloud. The court found that the method employed in the survey in question was justified due to the nature of bakery and pastry products, in particular those bearing a trade mark, which are often purchased in self-service shops and are consequently bought on sight, without their trade mark being spoken aloud. The method chosen when the survey was conducted of showing the word ‘doughnuts’, without saying it, thus reflected what actually occurs in a large number of bakery and pastry product purchases.
Regarding the second argument, the BoA did not explicitly address the applicant's argument based on the reputation of the ‘bimbo’ element of the applied-for mark in the contested decision. However, the court found that the ‘doughnuts’ element in the applied-for mark ‘would catch the attention of the relevant Spanish public, as it appears unusual in Spanish due to the atypical combination of vowels “ou” and the accumulation of consonants “ghn”’. Thus the ‘doughnuts’ element could not be considered negligible in the overall impression since it was longer and the word ‘doughnuts’ would attract the Spanish public's attention because it appeared atypical in Spanish owing, in particular, to the sequence of the consonants ‘ghn’.
Thus the 'doughnuts’ element, which is nearly identical to the earlier trade mark, had an independent and distinctive role in the CTMA. Further, since the 'doughnuts’ element was wholly meaningless for that consumer, the mark applied for, BIMBO DOUGHNUTS, did not form a unitary whole or a logical unit on its own in which the ‘doughnuts’ element would be merged with the ‘bimbo’ element. The part of the relevant public which was not familiar with English would not be able to understand the sign at issue as meaning that the goods concerned were doughnuts produced by the undertaking Bimbo.
Since bakery and pastry products are everyday low-cost consumer goods, the public must be considered to have a somewhat reduced level of attention when purchasing them, and due the average degree of visual and phonetic similarity between the trade marks at issue, the BoA was correct in concluding that there was a likelihood of confusion.
This judgment falls within the implementation of a well-noted case in 2012 (see Case C-196/11 Formula One Licensing BV v OHIM, 24 May 2012) in which the court reiterated the coexistence between CTMs and national trade marks and found that the validity of a national trade mark may not be called into question in the opposition proceedings of a CTM.
The court had previously held in 2007 that the word ‘dónuts’ was not generic in Spain where the average consumer perceives it as distinctive sign in relation to pastries, among others goods (see T-334/04 House of Donuts v OHIM—Panrico, 18 April 2007, para 48).
Departing from the basis that it is necessary to acknowledge a certain degree of distinctiveness of a national mark on which the opposition is based, the misspelled ‘doghnut’ sign has enjoyed the same presumption of validity on the Spanish Trade Mark Register (OEPM) since 1994, as has the word ‘dónut’—first registered in 1962. Indubitably, at both the time of registration and today, no Spanish consumer would have perceived the meaning of the word ‘doughnut’ as a description for a pastry made of dough. It is unfortunate that the court did not find it necessary to consider the reputation of BIMBO, thus concluding that the earlier national right prevails, at least until cancellation proceedings are brought in Spain.