02/06/2014
On 8 May 2014, the Court of Justice of the European Union (CJEU) issued a decision bringing to an end the long-running saga of the BIMBO DOUGHNUTS trade mark, between Bimbo SA and Panrico SA. The Court upheld the decisions of three lower tribunals – the Community Office (OHIM), the OHIM Board of Appeal and the European Court of First Instance – all of which had held that the application to register the trade mark BIMBO DOUGHNUTS should be refused on the ground that it was confusingly similar to Panrico’s earlier mark DOGHNUTS.
At first glance, to a native English speaker, this may seem astounding, perhaps another example of European nonsense, or even evidence of discrimination against blonde women of pleasing appearance but little intellect. But before you jump to pass judgement, ask yourself if you would also think the trade mark JIMBO MEGGYLEVES1 is likely to lead to confusion with MEGGALEVES if both marks were used on soup sold in this country? I bet you would! (For the uninitiated, see below for an explanation).
In fact, the logic of the decision cannot be faulted once the basis on which it was taken is understood.
Where registration of a Community mark is opposed on the basis of conflict with a trade mark registered nationally in one of the member states of the Community, any assessment of likelihood of confusion is based on the perceptions of customers in the member state in question. In this case, the earlier mark was registered in Spain, meaning that the focus shifts away from the native English-speaker, who is familiar with the word ‘doughnut’ and who can see that DOGHNUTS is just a misspelling of the name of the goods, to look at the linguistic skills of the average purchaser of doughnuts in Spain.
The Community has, I think, 24 official languages, and some are more widely recognised than others. Even the more familiar languages are, generally, often less well understood than we might expect. The word ‘bimbo’ is a case in point. I have used it above in its usual English sense, to describe a female of pleasing appearance but little intellect. In Spanish, however, the word is used to denote a small boy and the trade mark BIMBO is, in practice, sometimes accompanied on the Spanish company’s packaging, by a picture of a cute little boy.
Spanish consumers do eat doughnuts, generally calling them ‘rosquillas‘. Quite often, the widespread use of American English in Europe has an impact in making English terms more widely understood. Although American English was considered in this case, the effect was not what might have been expected; the Spanish consumer does recognise the meaning of the (to me, ghastly) ‘donut‘ but does not equate this with the English ‘doughnut’.
The tribunals in this case, from OHIM to the European Court, all held that the average Spanish consumer did not recognise the word ‘doughnut’ as anything other than, a made-up word, in effect, a meaningless jumble of letters. If the words ‘doughnuts’ and ‘doghnuts’ are to be treated as meaningless jumbles of letters forming what are, for average Spanish purchasers, unpronounceable words, it becomes much easier to see why the European Court considers that there is a likelihood that BIMBO DOUGHNUTS will be confused with DOGHNUTS.
The result for the Spanish company Bimbo SA is that it can very likely register BIMBO DOUGHNUTS as a national trade mark in other member states of the Community where the word ‘doughnuts’ is understood and recognised. It may well not be able to register the mark in its home country and major market, Spain, where, in effect, what we regard as a generic term has become someone’s proprietary trade mark for donuts or rosquillas.
Personally, I think that Bimbo SA had perhaps applied to register the wrong mark; had it sought to register BIMBO rather than BIMBO DOUGHNUTS, the opposition proceedings would never have taken place and Bimbo SA would be in a stronger position to argue that it is not, on its packaging, using the word ‘doughnuts’ to indicate commercial origin but, rather, simply to describe the product which is for sale. This would give it a defence to any claim brought for infringement of the Spanish trade mark rights of the other party, Panrico SA.
No doubt, the decision will give the companies something to ponder over their next coffee break.
- ‘Meggyleves’ is the Hungarian name for a kind of cherry soup.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
