The Court of Justice of the European Union ("CJEU") has handed down its decision in Bimbo SA v Office for Harmonisation in the Internal Market (OHIM).
In 2006, Spanish applicant Bimbo SA applied to register the word sign BIMBO DOUGHNUTS as a Community Trade Mark ("CTM") in Class 30. This application was opposed by Panrico, on the grounds that an earlier Spanish word mark, DOGHNUTS", was already registered under Class 30: therefore, Panrico argued, there was a likelihood of confusion under Article 8(1)(b) of the CTM Regulation.
The descriptive element of the mark (i.e. the description of the goods that the mark represents - "doughnuts" in this instance) would ordinarily not be held to have an independent distinctive role in the sign and thereby could not be assessed when considering likelihood of confusion amongst the relevant public. However, since the relevant public was held to be Spanish-speaking consumers, and the word "doughnut" does not exist in Spanish (although "dónut" does...), neither the mark BIMBO DOUGHNUTS nor DOGHNUTS could be found to be descriptive. The typical non-English-speaking Spanish consumer (less than 50% of the relevant public, according to Panrico) would perceive both DOGHNUTS and DOGHNUTS to be fantasy terms rather than descriptive of the goods they represent.
The opposition was confirmed on appeal, and upheld by the EU General Court. Bimbo SA subsequently appealed further to the CJEU on various grounds, including that the General Court had not taken into account "the fact that the trade mark for which registration was sought is characterised by its first element, 'bimbo', a trade mark with a wide reputation in Spain for the goods in respect of which registration of that trade mark was sought". The CJEU rejected the appeal and highlighted that the decision in Bimbo was consistent with other CTM law cases (including Medion AG v Thomson Multimedia Sales Germany & Austrial GmbH).
This decision demonstrates the importance of considering how a mark's individual components will be perceived by consumers; it will not be sufficient for a mark, or a part of a mark, to be distinctive to English-speaking consumers if it is assessed from the perspective of a non-English-speaking public in a different European country.
To read the full judgement, please click here.
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