An application to register the word mark BIMBO DOUGHNUTS as a Community Trade Mark (CTM) has been successfully opposed in the European courts. The ECJ upheld the General Court’s earlier decision that there is a likelihood of confusion between the word mark BIMBO DOUGHNUTS and a registered Spanish word mark, DOGHNUTS. (Bimbo SA v OHIM, Case C-591/12 P).
To establish an infringement or potential infringement of a trade mark in cases other than identical sign and identical goods cases, it is necessary to prove a likelihood of confusion on the part of the public. In Bimbo the ECJ confirmed that the existence of a likelihood of confusion must be assessed globally. The court will consider the overall impression given by the mark, account being taken, in particular, of its distinctive and dominant components. There is a greater likelihood of confusion where distinctive marks are involved. As such, marks with a highly distinctive character enjoy greater protection than marks whose character is less distinctive.
The ECJ stated that the assessment of the similarity between two trade marks must be made by examining each of the marks in question as a whole, rather than taking just one component of a composite mark and comparing it with another mark. The overall impression conveyed by a composite mark, such as BIMBO DOUGHNUTS, could be dominated by one or more of its components, but it was only if all the other components were negligible that an assessment could be carried out solely on the basis of the dominant element. In the present case, even if the element ‘bimbo’ were dominant, the ‘doughnuts’ element was deemed not to be negligible and therefore had to be taken into account in the comparison of the trade marks at issue.
Referring to the decision in Medion (Case C-120/04), the ECJ noted that it was possible for a registered trade mark used by a third party in a composite sign, that included the name of the company of the third party, to retain an independent distinctive role in the composite sign. On account of the earlier mark still having an independent distinctive role, it sufficed, in order to establish a likelihood of confusion, that the public attributed the origin of the goods or services covered by the composite sign to the owner of that mark.
The ECJ explained that a component of a composite sign does not retain an independent distinctive role if together with the other components it forms a unit which has a different meaning as compared with the meaning of those components taken separately. In Bimbo, the ‘doughnuts’ element was considered to be wholly meaningless for the relevant public. As the OHIM Board of Appeal had earlier observed, ‘doughnut’ is an English word which does not exist in Spain, where its equivalents are “donut” or “rosquilla”. Together with the word “bimbo”, it did not form a unit having a different meaning as compared with the meaning of those elements taken separately. The ‘doughnuts’ element still had an independent distinctive role and therefore had to be taken into account in the global assessment of likelihood of confusion.
While the ECJ did not introduce any new principles of Community trade mark law in upholding the General Court’s decision that there was a likelihood of confusion between BIMBO DOUGHNUTS and DOGHNUTS, its comments are helpful in placing the notion of an ‘independent distinctive role’ in some context. The court makes clear that the purpose of assessing whether a sign has such a role is to determine how it will be perceived by the relevant public, in order to ascertain the overall impression made by the mark.
The decision, coming eight years after the initial application to register the word mark, also highlights the importance of considering the merits of litigation and the potential virtues of alternative dispute resolution procedures which are increasingly being relied upon.