Bimbo SA v OHIM, BIMBO DOUGHNUTS, Case T-569/10, 10 October 2012

This decision by the General Court highlights a problem that can arise when CTMs and national trade mark rights interact. Bimbo SA applied to register the mark BIMBO DOUGHNUTS as a CTM covering "pastry and bakery products specially doughnuts" in class 30. This application was opposed by Panrico SA on the basis of its earlier registered rights in Spain for its DOGHNUTS mark covering "all kinds of confectionery and pastry products", also in class 30.

The opposition was upheld, including on appeal to the OHIM Board of Appeal and, more latterly, to the General Court. It was held that ‘DOUGHNUTS’ in the applicant’s mark and the opponent’s DOGHNUTS were sufficiently similar to lead to consumer confusion. On first glance, this seems like a bizarre decision to English speakers, since ‘DOUGHNUTS’ is descriptive for the goods concerned and a clash on a descriptive element alone is almost always insufficient for an opposition to succeed.

However, as the earlier rights in this case were Spanish registrations, the notional average consumer (from whose perspective the likelihood of confusion between the marks is assessed) was also deemed to be Spanish, as is usual practice. This meant that the central issue when assessing the conflict between the trade marks was essentially whether Spanish consumers, not English-speaking consumers, would recognise the word "doughnut". The Court held that "doughnut" would not be understood by Spanish consumers, thus meaning that it would be perceived as an invented word and not considered descriptive. It was the conflict between the apparently invented words DOUGHNUTS and DOGHNUTS that resulted in the successful opposition.

In summary, whilst it may appear illogical that a mark could be blocked by an earlier mark because of a conflict regarding a descriptive element, this was a valid conclusion under CTM law, so highlighting a potential trap about which other CTM applicants should be aware.