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Can you combine a third party’s existing trade mark with another distinctive mark?

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01/07/2014

In BIMBO SA v OHIM [1], BIMBO SA applied to register BIMBO DOUGHNUTS as a Community Trade Mark in respect of “pastry and bakery products, specifically doughnuts”. That application was opposed by Panrico SA on the basis of prior registrations, in particular the mark DOGHNUTS, which was registered in Spain in respect of “pastry products and preparations…round-shaped dough biscuits”.

The General Court upheld the opposition from the OHIM’s Board of Appeal. In its decision, the General Court referred to the leading, somewhat controversial case of Medion [2], which established that “where goods or services are identical, there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein”.

The General Court considered that DOUGHNUTS had an independent distinctive role in Bimbo’s mark.

Before the CJEU, Bimbo argued that the General Court decision contradicted established case law which was to the effect that the average consumer usually perceived a trade mark as a whole and only in exceptional cases was it possible for a component of a composite mark to retain an independent distinctive role.

The CJEU declined the opportunity to revisit Medion, despite a recommendation from the Advocate General that it do so. It was happy that the General Court had carried out the necessary global assessment in determining whether there was a likelihood of confusion and its decision was not based solely on the fact that the term “doughnut” had an independent distinctive role within the Bimbo mark. Rather, the CJEU confirmed that, following Medion, where an earlier mark is used by a third party as part of a composite sign that includes the company name of the third party, that earlier mark might retain an independent distinctive role, provided that it does not form a unit with the other elements of the composite sign having a different meaning from those components taken separately, and even if the other elements of the sign are the dominant ones.

Bimbo is not the first company to attempt – and fail – to register a mark containing DOUGHNUTS as a Community Trade Mark. The CJEU decision is likely to disappoint a number of brand owners who feel that the Medion case is operating as an unreasonable restriction to registrations.

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[1] Case C – 591/12 P
[2] Case C‑120/04 Medion [2005] ECR I‑8551