New decision of the ECJ on the complex trademark
The Court of Justice of the European Union ("ECJ"), in its judgment of 8 May 2014, has ruled in Case C-591/12, on the appeal lodged on December 10, 2012, by Bimbo SA, a company based in Barcelona (Spain) ("Bimbo") against the judgment of the General Court of the European Union Bimbo / OHIM - Panrico (T 569/10), with which the Court had rejected the appeal of Bimbo direct the reform of the decision of the fourth Board of Appeal of OHIM of 7 October 2010, relating to opposition proceedings between Panrico SA, also based in Spain ("Panrico"), and Bimbo.
The trademark at issue was the word mark "Bimbo Doughnuts", for which the Bimbo had applied for registration with reference to the goods in class 30. Panrico based its opposition on several previous national and international trademarks word and figurative marks, particularly on the Spanish word trademark "Doghnuts" for items of the same class 30.
The General Court had held that, even assuming that the element "bimbo" held a dominant position in trademark of which registration had been requested, the element "Doghnuts" was not negligible within the overall impression produced by the mark and, therefore, was to be taken into account in the comparison of the conflicting marks. In addition, since the element "Doghnuts" was devoid of any meaning for the public of reference, that element was not formed with the other element of the sign, taken as a whole, a unit having a sense different from that of those elements individually taken. Therefore the Court argued that the element of "donuts" retained an independent distinctive role in the mark for which registration was requested and, therefore, had to be taken into account in the overall assessment of the likelihood of confusion. The General Court had concluded that there was a likelihood of confusion and that the trademark at issue was not valid.
The ECJ, arguing the correctness of the decision of the General Court, dismissed the appeal brought by Bimbo.