CJEU provides guidance on distinctive elements within composite marks

By Henry Elliott


The CJEU has dismissed an appeal by Bimbo relating to Bimbo's application for a CTM registration for BIMBO DOUGHNUTS in Class 30 for 'pastry and bakery products, specially doughnuts' (C-591/12) finding that there was a likelihood of confusion with an earlier national mark for DOGHNUTS.

Panrico opposed the registration under Art 8(1)(b) of Regulation 207/2009 based on a number of earlier national and international marks, including the Spanish word mark DOGHNUTS registered for 'pastry products and preparations… round-shaped dough biscuits…' in Class 30. The opposition was upheld by the Opposition Division, the Board of Appeal and the General Court based on the finding that there was a likelihood of confusion between the marks.

The CJEU's decision considered the attribution of an independent distinctive role to elements of a composite mark. The average consumer normally perceived a mark as a whole and did not analyse its various details, accordingly marks had to be compared by examining each of them as a whole. Only if all the other components of a mark were negligible could the assessment of similarity be carried out solely on the basis of the dominant element. A component of a composite mark did not retain an independent distinctive role if, together with the other component or components of a mark, that component formed a unit having a different meaning as compared with the meaning of those components taken separately.

The CJEU stated that it was necessary to firstly ascertain the overall impression made on the target public by the mark applied for. This included an analysis of the relative weight of components of a mark in the perception of the target public. Once the overall impression had been ascertained, the likelihood of confusion could be assessed in the light of the overall impression provided by the marks and all factors relevant to the case.

The CJEU agreed with the AG's opinion that it was clear from the case-law following Medion (C-120/04) that the CJEU had not introduced a derogation from the principles governing the assessment of the likelihood of confusion in that case. The ruling in Medion in general terms meant that whenever the element of a composite sign was identical or similar to an earlier trade mark and significantly contributed to (but did not dominate) the image of that mark which remained in the public's memory (notwithstanding the fact that another element of the sign might be more prominent) it had to be taken into consideration for the purposes of appraising the similarity between the composite sign and the earlier trade mark and was therefore relevant for the purposes of assessing the likelihood of confusion.

In this case, the General Court had found that even if the element 'bimbo' was dominant in the mark applied for, the 'doughnuts' element was not negligible in the overall impression produced by the mark.  The 'doughnuts' element was meaningless for the relevant (Spanish) public, so when combined with 'bimbo' it did not form a unit having a different meaning as compared with the meaning of the elements separately. Therefore the 'doughnuts' element still had an independent distinctive role in the mark applied for and had to be taken into account in the global assessment of the likelihood of confusion.

The CJEU therefore found that the General Court had based its findings on a global assessment and correctly applied Article 8(1)(b) to find that there was a likelihood of confusion.