Panrico is proprietor of a number of Spanish trademarks consisting of the word “Doughnut” or variations thereof, such as in the present case “DOGHNUTS”. These marks, although reproducing the English word “doughnut”, have been protected for many decades in Spain and are understood as trademarks by the Spanish public, not as product names. Bimbo, one of the world’s largest bakery products company, sought registration of “BIMBO DOUGHNUTS” as a Community trademark (CTM) and expected an easy acceptance, since from Bimbo’s perspective “doughnuts” is a product name, just like “rolls” or the like. However, Panrico succeeded with its opposition based on its Spanish mark “DOGHNUTS” in all instances. The appeal against the General Court’s judgment of October 10, 2012, T-569/10, surprisingly gave rise to a hearing, an extensive opinion by Advocate General Mengozzi and a judgment by a five-judges chamber. The Court confirmed the rejection of Bimbo’s CTM application.
In the course of its judgment, the Court confirmed its previous case law that all elements of conflicting trademarks must be taken into account, unless they are negligible, and that “DOUGHNUTS” in the later mark was not negligible in view of the relevant Spanish public. The Court also re-affirmed its judgment in the Medion case (Case C-120/04 – LIFE/THOMSON LIFE):
- In this connection, the Court of Justice has stated that it is possible that an earlier mark used by a third party in a composite sign that includes the name of the company of the third party retains an independent distinctive role in the composite sign. Accordingly, in order to establish the likelihood of confusion, it suffices that, on account of the earlier mark still having an independent distinctive role, the public attributes the origin of the goods or services covered by the composite sign to the owner of that mark.
- None the less, a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, that component forms a unit having a different meaning as compared with the meaning of those components taken separately.
- In the present case, the General Court found, in paragraphs 79 and 81 of the judgment under appeal, that, even if the element “bimbo” were dominant in the trademark for which registration was sought, the “doughnuts” element was not negligible in the overall impression produced by that trademark and, accordingly, the “doughnuts” element had to be taken into account in the comparison of the trademarks at issue.
- In paragraph 97 of that judgment, the General Court stated that, since the “doughnuts” element is wholly meaningless for the relevant public, that element did not form, together with the other element of the sign, a unit having a different meaning as compared with the meaning of those elements taken separately. It accordingly found that the “doughnuts” element still had an independent distinctive role in the trademark for which registration was sought and had therefore to be taken into account in the global assessment of the likelihood of confusion.
- In paragraph 100 of the judgment under appeal, the General Court held that, in the light of all factors relevant to the case, the global assessment confirmed the Board of Appeal’s conclusion that there was a likelihood of confusion.
- Accordingly, the General Court did not conclude that there was a likelihood of confusion merely from the finding that, in the trademark applied for, the “doughnuts” element has an independent distinctive role, but based its conclusion in that regard on a global assessment that included the different stages of the examination required under the case-law referred to in paragraphs 19 to 25 above, and in the course of which it took into account the factors of the case. It thus correctly applied Article 8 (1) (b) CTMR.
- That conclusion is not invalidated by the other arguments put forward by Bimbo.
- In so far as Bimbo criticises the General Court, first of all, for having used, in paragraph 97 of the judgment under appeal, the terms “distinctive character” and “wholly meaningless element”, suffice it to point out that, in that paragraph, the General Court merely rejected Bimbo’s submissions purporting to establish that, being devoid of distinctive character, the “doughnuts” element is not to be taken into account in the assessment of the likelihood of confusion.
- The General Court thereby supplemented its assessment, set out in paragraph 81 of the judgment under appeal, that the “doughnuts” element was not negligible in the overall impression produced by the trademark for which registration was sought and that it had therefore to be taken into account in the comparison of the trademarks at issue. In so doing, the General Court in no way confused the terms in question.
- Next, in so far as Bimbo argues that the General Court disregarded the rule that a finding that one component of a composite sign has an independent distinctive role constitutes an exception, that must be duly substantiated, to the general rule that the consumer normally perceives a trademark as a whole, it should be pointed out that the purpose of examining whether any of the components of a composite sign has an independent distinctive role is to determine which of those components will be perceived by the target public.
- Indeed, as the Advocate General observed in points 25 and 26 of his opinion, it is necessary to ascertain, in each individual case, the overall impression made on the target public by the sign for which registration is sought, by means of, inter alia, an analysis of the components of a sign and of their relative weight in the perception of the target public, and then, in the light of that overall impression and all factors relevant to the circumstances of the case, to assess the likelihood of confusion.
- The determination of which components of a composite sign contribute to the overall impression made on the target public by that sign is to be undertaken before the global assessment of the likelihood of confusion of the signs at issue. Such an assessment must be based on the overall impression produced by the trademarks at issue, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, as has been stated in paragraph 21 above. Therefore, this does not involve an exception that must be duly substantiated to that general rule.
- Moreover, the individual assessment of each sign, as required by the settled case-law of the Court of Justice, must be made in the light of the particular circumstances of the case and cannot therefore be regarded as being subject to general presumptions. As the Advocate General observed in point 24 of his opinion, it is clear, in particular, from the case-law subsequent to Medion that the Court of Justice did not introduce, in that judgment, a derogation from the principles governing the assessment of the likelihood of confusion.
The confirmation of a General Court’s judgment by the ECJ is a common occurrence which would not normally merit any specific mention or analysis. However, the DOGHNUTS/BIMBO DOUGHNUTS judgment is significant beyond the dismissal of the appeal because it confirms that LIFE/THOMSON LIFE belongs to the core elements of the ECJ’s judgments on likelihood of confusion, requiring a finding of similarity of marks when the later mark incorporates the earlier mark as an independent element. There are still quite a number of court observers and commentators which consider the “independent distinctive element” analysis a – rare – exception to the general rule. Nevertheless, finding similarity of marks is not the end of the story – similarity is only one of the elements of the likelihood of confusion analysis, which requires in addition to take into account the degree of similarity of the goods or services, the degree of similarity of the conflicting marks and, in particular, the degree of distinctiveness of the earlier mark. Thus, if the common element has only weak distinctive character, there may well be no likelihood of confusion even if the later mark consists of an element which is the same as the earlier mark.