The CJEU has rejected an appeal from an EU General Court decision upholding an opposition against a Community Trade Mark application for the word mark BIMBO DOUGHNUTS for goods in Class 30. The opposition succeeded on the ground that there was a likelihood of confusion, under Article 8(1)(b) of the Community Trade Marks Regulation (207/2009/EC), with an earlier Spanish registration for DOGHNUTS also in Class 30.
This case builds on the CJEU's previous ruling in the Medion case (Case C-120/04 Medion AG v Thomson Multimedia Sales Germany & Austria GmbH) in which it was held that an earlier registered mark LIFE was infringed by use of the composite sign THOMSON LIFE because the earlier mark retained an "independent distinctive role" in the later sign.
This decision highlights that what is descriptive or generic in one country may still be distinctive in another. The assessment of the mark for an opposition based on Spanish rights must be from the point of view of the Spanish public and it was held that most such consumers would perceive the word DOUGHNUT as a foreign or fantasy term. This leads to an assessment in which DOUGHNUTS can play an independent distinctive role within the composite mark in Spain, and hence to a finding of a likelihood of confusion due to similarities between the words DOGHNUTS and DOUGHNUTS.
The full judgment can be accessed here
Case C 591/12 P BIMBO SA V OHIM