JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
10 October 2012 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark BIMBO DOUGHNUTS – Earlier national word mark DOGHNUTS – Relative ground for refusal – Article 75 of Regulation (EC) No 207/2009 – Article 76(2) of Regulation No 207/2009 – Article 8(1)(b) of Regulation No 207/2009 – Application for alteration – Admissibility)
In Case T‑569/10,
Bimbo SA, established in Barcelona (Spain), represented by J. Carbonell Callicó, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Panrico SA, established in Barcelona, represented by D. Pellisé Urquiza, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 7 October 2010 (Case R 838/2009‑4) concerning opposition proceedings between Panrico SA and Bimbo SA,
THE GENERAL COURT (Seventh Chamber),
composed of A. Dittrich (Rapporteur), President, I. Wiszniewska-Białecka and M. Prek, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 13 December 2010,
having regard to the response of OHIM lodged at the Court Registry on 13 May 2011,
having regard to the response of the intervener lodged at the Court Registry on 3 June 2011,
having regard to the reply lodged at the Court Registry on 8 August 2011,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 25 May 2006, the applicant, Bimbo SA, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark for which registration was sought is the word sign BIMBO DOUGHNUTS.
3 The goods for which registration was sought are in Class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘pastry and bakery products, specially doughnuts’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 42/2006 of 16 October 2006.
5 On 16 January 2007, Panrico SL, now Panrico SA, the intervener, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6 The opposition was based on a number of earlier national and international word and figurative trade marks. In particular, it was based on the Spanish word mark DOGHNUTS, registered on 18 June 1994 under No 1288926 for goods within Class 30 corresponding to the following description: ‘all kinds of confectionary and pastry products and preparations and products and preparations for sweets and confections; sugar, chocolate, tea, cocoa, coffee and substitutes thereof, vanilla, essences and products and preparations for making caramel cream and cakes, chocolate and sugar-based foodstuffs, ices, candy, chocolates, round-shaped dough biscuits, chewing gum tablets and biscuits’.
7 The grounds raised in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.
8 On 25 May 2009, the Opposition Division allowed the opposition.
9 On 24 July 2009, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 7 October 2010 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal. Like the Opposition Division, the Board of Appeal merely compared the trade mark applied for with the earlier Spanish word mark DOGHNUTS (‘the earlier trade mark’) and concluded on that basis that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
11 The Board of Appeal noted that ‘doughnut’ was an English word meaning a ‘ring-shaped small spongy cake made of dough’. According to the Board of Appeal, the word does not exist in Spanish, where its equivalents are ‘dónut’ or ‘rosquilla’. The Board of Appeal took the view that, for the average Spanish consumer (excluding those who speak English), the word ‘doughnut’ did not describe the goods in question or their qualities and did not have any particular connotation in relation to them. In the Board’s view, the earlier sign (like the sign applied for) would be perceived as a foreign or fantasy term by most consumers.
12 The Board of Appeal also considered the signs at issue to be similar, to the extent that the earlier trade mark was incorporated almost identically in the mark applied for. It considered there to be an average degree of visual and phonetic similarity between the marks at issue. In its view a conceptual comparison was not possible.
13 The Board considered that the goods covered by the marks at issue were identical and that the earlier trade mark had an average degree of distinctiveness.
14 Taking account of the average distinctiveness of the earlier trade mark, the Board of Appeal concluded that, in an overall appraisal of the likelihood of confusion, owing to the average degree of visual and phonetic similarity between the signs, there was a likelihood of confusion on the part of the relevant consumers for all the goods at issue, which were found to be identical.
Forms of order sought
15 The applicant claims that the Court should:
– alter the contested decision, pursuant to Article 65(3) of Regulation No 207/2009, since it infringes Articles 75 and 76 and Article 8(1)(b) of that regulation, granting the application for registration of the trade mark applied for;
– in the alternative, should the principal claim be rejected, annul the contested decision, since it infringes those provisions;
– order OHIM and the intervener to pay the costs.
16 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by OHIM.
17 The intervener claims that the Court should:
– declare the response to be admissible and well founded;
– uphold the contested decision;
– declare that the Community trade mark applied for shall not be registered.
Law
1. Admissibility of the applicant’s first head of claim
18 By its first head of claim, the applicant is asking the Court to alter the contested decision and to grant the application for registration of the trade mark applied for.
19 In that regard, it should be noted that the jurisdiction of the Court to alter decisions operates to the effect that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation No 207/2009 (see the order in Case T‑285/08 Securvita v OHIM (Natur‑Aktien‑Index) [2009] ECR II‑2171, paragraph 14 and the case-law cited).
20 In addition, it should be pointed out that Article 45 of Regulation No 207/2009 provides that ‘[w]here an application meets the requirements of this Regulation and where no notice of opposition has been given within the period referred to in Article 41(1) or where opposition has been rejected by a definitive decision, the trade mark shall be registered as a Community trade mark, provided that the registration fee has been paid within the period prescribed’. Article 45 also specifies that ‘[i]f the fee is not paid within this period the application shall be deemed to be withdrawn’.
21 Under Article 131 of Regulation No 207/2009, an examiner is to be responsible for taking decisions on behalf of OHIM in relation to an application for registration of a Community trade mark, including the matters referred to in Articles 36, 37 and 68 of the regulation, except in so far as an Opposition Division is responsible.
22 It should be added that, in the context of appeals brought against decisions of the examiner or the Opposition Division pursuant to Article 58(1) of Regulation No 207/2009, a Board of Appeal can be called on to rule, in the light of the powers conferred on it by Article 64(1) of the regulation, only on certain of the conditions for registration of a Community trade mark, that is to say, either on the compliance of an application for registration with the provisions of that regulation or on the outcome of any opposition to such an application.
23 Consequently, it is clear that a Board of Appeal does not have jurisdiction to hear and determine an application that it register a Community trade mark (order in Natur-Aktien-Index, paragraph 19 above, paragraph 22). In those circumstances, nor is it for the Court, in accordance with the case-law cited in paragraph 19 above, to hear and determine an application for alteration which requests that it amend the decision of a Board of Appeal to that effect.
24 Given that it is not for the Court to ascertain, for example, whether the registration fee has been paid within the prescribed period, it cannot grant an application for registration of a trade mark.
25 It follows from the foregoing that the applicant’s first head of claim must be rejected as inadmissible.
2. The application for annulment
First plea, alleging infringement of Articles 75 and 76 of Regulation No 207/2009
26 The applicant points out that on 9 February 2010 it sent a statement to OHIM setting out its reply to the intervener’s observations. It maintains that although OHIM accepted that statement and the annexes thereto it did not make the slightest reference in the contested decision either to that document or to the response provided by the other party in a statement of 8 April 2010. However, in the statement of 9 February 2010, the applicant put forward facts and documents which were especially relevant for assessing the likelihood of confusion, namely facts and documents relating (i) to the lack of distinctive character of the words ‘doughnuts’ and ‘doghnuts’ because of the knowledge that Spanish consumers have of those words, and (ii) to the fact that BIMBO was one of the best-known trade marks on the Spanish market and was therefore the dominant element of the trade mark applied for. The applicant points out that it drew attention to those two facts – the lack of distinctive character of the word ‘doughnuts’ and the reputation of the BIMBO trade mark – from the time it lodged its first document in the opposition proceedings.
27 The applicant maintains that the failure to address those two points and to make any reference to the statements lodged by the parties, which OHIM simply passed over, amounts to an infringement of Article 75 and Article 76(2) of Regulation No 207/2009.
28 OHIM and the intervener contend that this plea should be rejected.
29 The Court notes that there are, in essence, two parts to this plea: the first alleging infringement of Article 76(2) of Regulation No 207/2009 and the second alleging infringement of Article 75 of the regulation.
First part of the first plea: infringement of Article 76(2) of Regulation No 207/2009
30 Pursuant to Article 76(2) of Regulation No 207/2009, OHIM ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’.
31 The applicant argues, in essence, that it follows from that provision that OHIM is entitled to disregard facts or evidence submitted by the parties only when the facts or evidence have not been submitted in due time. In the applicant’s view, OHIM infringed that provision by failing to take account of certain facts and evidence submitted by the parties, although they had been submitted in due time.
32 In that regard, the Court notes that it is in no way apparent from the contested decision that the Board of Appeal refused to take into account the arguments and evidence submitted by the applicant in the statement it provided on 9 February 2010. It should also be noted that the Board of Appeal stated, in paragraph 6 of the contested decision, that the applicant had filed a statement of grounds and a reply (namely the document provided on 9 February 2010). In addition, the Board of Appeal mentioned, in paragraph 8 of the contested decision, the fact that the opponent had filed a rejoinder.
33 Moreover, the Board of Appeal summarised, in paragraph 7 of the contested decision, the arguments that the applicant had put forward in the administrative procedure. The Board of Appeal noted, in particular, that, in the applicant’s view, the word ‘doughnuts’ was devoid of any distinctive character and was descriptive for the Spanish consumer and that the applicant had drawn attention to the fact that it was the owner of many BIMBO trade marks.
34 In that regard, it must be stated that the Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations of fundamental importance in the context of the decision (judgment of 11 January 2007 in Case C‑404/04 P Technische Glaswerke Ilmenau v Commission, not published in the ECR, paragraph 30). It follows that the fact that the Board of Appeal did not reproduce all of the arguments of one party, or did not address each of those arguments or each of the items of evidence submitted, cannot by itself lead to a finding that the Board of Appeal refused to take them into account (Case T‑303/08 Tresplain Investments v OHIM – Hoo Hing (Golden Elephant Brand) [2010] ECR II‑5659, paragraph 46).
35 In this case, the applicant’s statement of 9 February 2010 was submitted in due time, the Board of Appeal mentioned it in the contested decision and gave no indication that there was any problem of admissibility in that regard. In those circumstances, the Board of Appeal implicitly held that the applicant’s statement of 9 February 2010, including the arguments and evidence put forward therein, was admissible. That is also the case of the rejoinder of 8 April 2010, which was submitted by the intervener during the procedure before the Board of Appeal.
36 It follows that the Board of Appeal did not infringe Article 76(2) of Regulation No 207/2009.
Second part of the first plea: infringement of Article 75 of Regulation No 207/2009
37 Article 75 of Regulation No 207/2009 provides:
‘Decisions of [OHIM] shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had [an] opportunity to present their comments.’
38 First of all, it must be stated that the applicant’s reference to the second sentence of Article 75 of Regulation No 207/2009 is irrelevant. The second sentence of Article 75 of the regulation concerns the right of the parties to be heard. In this case, the applicant has not argued that the Board of Appeal based its decision on reasons or evidence on which it did not have an opportunity to present its comments.
39 The applicant is in fact arguing that the Board of Appeal infringed the obligation to state reasons provided for in the first sentence of Article 75 of Regulation No 207/2009.
40 It is to be observed that in the present case the Board of Appeal set out in the contested decision the facts and legal considerations which led it to take that decision, as can be seen from the summary of the contested decision in paragraphs 10 to 14 above.
41 As regards, more particularly, the applicant’s argument that the Board of Appeal failed to respond to two specific arguments which it had put forward during the procedure before OHIM, the following points should be made.
42 Firstly, with regard to the applicant’s argument that the word ‘doughnuts’ is regarded by the Spanish public as descriptive of the goods in question, the Board of Appeal addressed that argument by stating, in paragraph 18 of the contested decision, that for the average Spanish consumer (excluding those who speak English) the word ‘doughnuts’ did not describe the goods or their qualities. It also held that the earlier sign, like the sign applied for, would be perceived as a foreign or fantasy term ‘by most consumers’.
43 Thus, the Board of Appeal implicitly held that the majority of average Spanish consumers did not speak English or, at least, did not speak it well enough to know the meaning of the word ‘doughnuts’. In that context, it should be observed that the reasoning of the decision of a Board of Appeal may be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 55).
44 In this case, the Board of Appeal’s reasoning rejecting the argument based on the allegedly descriptive character of the ‘doughnuts’ element of the trade mark was sufficient to enable the applicant to understand the reasons that had led the Board of Appeal to adopt the contested decision and to enable the Court to exercise its power of review.
45 Secondly, with regard to the applicant’s argument based on the reputation of the ‘bimbo’ element of the trade mark applied for, it is true that the Board of Appeal did not explicitly address that argument in the contested decision. However, it pointed out that the ‘doughnuts’ element in the trade mark applied for ‘[would] catch the attention of the relevant Spanish public, as it appears unusual in Spanish due to the atypical combination of vowels “ou” and the accumulation of consonants “ghn”’. The Board thus held that that element could not be disregarded in the comparison in question. Thus, it follows from the contested decision that the Board of Appeal did not consider that the ‘bimbo’ element of the mark applied for dominated the overall impression created by the mark applied for to such an extent that the other component – the ‘doughnuts’ element – could be disregarded. The reasoning relating to this point was also sufficient to enable the applicant to know the reasons for the contested decision and to enable the Court to review the legality of the decision on that point.
46 The statement of reasons in the contested decision is thus sufficient in law.
47 It follows from all the foregoing that the applicant’s first plea must be rejected.
Second plea: infringement of Article 8(1)(b) of Regulation No 207/2009
48 The applicant claims that the Board of Appeal was wrong to conclude that there was a likelihood of confusion. In that regard, it submits that the word ‘doughnuts’ is descriptive of the goods in question and that it has no distinctive character, even for Spanish consumers. Furthermore, it submits that BIMBO is one of the best‑known trade marks in Spain. Given that the only distinctive element of the trade mark applied for – that is, ‘bimbo’ – is not similar to the earlier trade mark, there is no likelihood of confusion.
49 OHIM and the intervener contend that this plea should be rejected.
50 As provided in Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Under Article 8(2)(a)(ii) of Regulation No 207/2009, earlier trade marks include trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
51 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically‑linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
The relevant public
52 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
53 In this case, the Board of Appeal rightly found that the goods concerned were everyday products and that the relevant public thus consisted of average consumers. Furthermore, the Board of Appeal was correct in stating that since the earlier trade mark was a Spanish mark, the likelihood of confusion had to be assessed by reference to the Spanish public.
The comparison of the goods
54 The Board of Appeal correctly found – without being challenged on this point by the applicant – that the goods concerned were identical, since the ‘pastry and bakery products, specially doughnuts’ claimed for the trade mark applied for were included in the category of ‘all kinds of confectionary and pastry products’ protected by the earlier trade mark.
The comparison of the signs
55 The global assessment of the likelihood of confusion in relation to the visual, phonetic or conceptual similarity of the signs at issue must be based on the overall impression created by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and case‑law cited).
– The elements of the trade mark applied for to be considered in the comparison of the signs
56 The assessment of the similarity between two trade marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, cited in paragraph 55 above, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 55 above, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by it (Nestlé v OHIM, paragraph 43).
57 In this case, the applicant argues, in essence, that the trade mark applied for is dominated by the element ‘bimbo’, which is placed at the start of that mark and is itself a trade mark with a reputation in Spain, and that the word ‘doughnuts’ will be considered descriptive by the relevant public and will therefore not retain its attention.
58 It is thus appropriate to identify, first of all, the elements of the trade mark applied for which are to be taken into consideration in the comparison of the signs.
59 As part of that exercise, it is necessary to consider, in the first place, whether the word ‘doughnuts’ is, as the applicant maintains, devoid of distinctive character.
60 As the Board of Appeal found, in paragraph 18 of the contested decision, ‘doughnuts’ is an English word meaning ‘a ring-shaped small spongy cake made of dough’. Consequently, in English that word is descriptive of the products in question. However, as the Board of Appeal pointed out, the word does not exist in Spanish.
61 In that regard, the Court recalls that it is possible that, because of linguistic, cultural, social and economic differences between the Member States, a trade mark which is devoid of distinctive character or descriptive of the goods or services concerned in one Member State is not so in another Member State (Case C‑421/04 Matratzen Concord [2006] ECR I‑2303, paragraph 25).
62 The relevant question is whether the average Spanish consumer understands the meaning of the word ‘doughnuts’. Only if he understands the meaning of that word will it be descriptive from the point of view of the relevant public.
63 The Court observes that the degree of familiarity of the Spanish public with the English language is generally held to be low (judgment of 18 April 2007 in Joined Cases T‑333/04 and T‑334/04 House of Donuts v OHIM – Panrico (House of donuts), not published in the ECR, paragraph 53 and the case-law cited).
64 The arguments put forward by the applicant do not call in question the fact that there is a rather low level of knowledge of English in Spain.
65 The applicant relies on a statistical study carried out in 2007 among 25- to 64‑year-olds, according to which 53% of Spaniards claimed to speak one or more foreign languages. In that regard, the point should be made, first of all, that it is not clear from the study what percentage of the interviewees said they spoke English. Admittedly, it emerges from the study that English is the most widely‑spoken foreign language in Spain. The fact remains however that the figure of 53% will include a certain number of people who do not speak English but one or more other foreign languages.
66 In any event, it is apparent from that study that at least 47% of the interviewees do not speak English, since they have no knowledge of any foreign language.
67 The applicant’s argument that knowledge of English in Spain is steadily increasing, particularly among young people, does not refute the fact that, according to the fairly recent study submitted by the applicant itself, almost 50% of Spaniards have no command of any foreign language.
68 As regards the applicant’s argument that the profile of consumers of doughnuts and industrial bakery products tends to be a young one, the Court observes that, in order to determine the public targeted by the products concerned, it is necessary to refer to the list of products covered by the trade marks in question. The mark applied for does not concern only ‘doughnuts’ but the broader category of ‘pastry and bakery products’, mentioning ‘doughnuts’ by way of example. The point should be made that pastry and bakery products, even industrial ones, are purchased and consumed by people of all ages.
69 Moreover, the Court recalls that, in order to find that there exists a likelihood of confusion as referred to in Article 8(1)(b) of Regulation No 207/2009, it is not necessary to find that that likelihood exists for the whole of the relevant public (see, to that effect, RESPICUR, paragraph 52 above, paragraphs 73 and 74).
70 Even if there were no likelihood of confusion on the part of the Spanish public that does understand the meaning of the word ‘doughnuts’, that fact alone would not be a ground for rejecting the opposition, since a large part of the Spanish public does not speak English and will thus not understand that word. As has been found above, the evidence produced by the applicant does not prove that the vast majority of Spaniards understand the sign ‘doughnuts’.
71 As regards the applicant’s argument that the Spanish public will identify the word ‘doughnuts’ with the word ‘dónuts’, which is how the word is written phonetically in Spanish, the part of the relevant public which does not speak English will not realise, on seeing the word ‘doughnuts’, that ‘dónuts’ is the Spanish transcription of that word. It is thus not necessary in this case to decide whether the word ‘dónut’ is regarded by the Spanish consumer as a generic term denoting doughnuts, as the applicant maintains, or whether ‘dónut’ is regarded as denoting a trade mark with a reputation which belongs to the intervener, as the latter maintains.
72 The applicant concedes moreover that in a survey of Spanish consumers, which was produced by the intervener in the course of the procedure before OHIM, more than 80% of the interviewees stated that they did not know the meaning of the word ‘doughnuts’. The applicant criticises that survey on the ground that the researcher only showed the word to the interviewees but did not speak it aloud.
73 The applicant’s criticism of the method employed in the survey in question is not justified. Bakery and pastry products, in particular those bearing a trade mark, are often purchased in self-service shops and are consequently bought on sight, without their trade mark being spoken aloud. The method chosen when the survey was conducted of showing the word ‘doughnuts’, without saying it, thus reflects what actually occurs in a large number of bakery and pastry product purchases.
74 The Court must therefore reject the applicant’s arguments that, for the relevant public, the word ‘doughnuts’ lacks distinctive character.
75 In the second place, concerning the applicant’s argument that the element ‘bimbo’ is dominant in the trade mark applied for because it is one of the best-known trade marks in Spain, the following points should be made.
76 Admittedly, the applicant submitted a number of items of evidence in the course of the procedure before OHIM in order to prove that BIMBO was a trade mark with a reputation and the Board of Appeal did not express a view on that evidence in the contested decision and thus put forward nothing to undermine the probative value of the evidence.
77 Furthermore, the fact that an element of a composite trade mark is in itself a trade mark with a reputation may play a part in the appraisal of the relative weight of the various components of the composite mark. Thus, if one element of a composite mark is itself a mark with a reputation, it may, by the same token, play a more important role in the composite mark.
78 However, the mere fact that one element of a composite mark formed of two elements plays a more important role than the other does not automatically mean that the comparison between the marks at issue can be limited to considering the former element. Indeed, as is clear from the cases cited in paragraph 56 above, it is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of the dominant element.
79 In this case, the ‘doughnuts’ element cannot be considered negligible in the overall impression created by the mark applied for. That would be the case even if the reputation of the element ‘bimbo’, on which the applicant relies, were accepted.
80 It should be recalled that the Court has already rejected the applicant’s argument based on the allegedly descriptive nature of the ‘doughnuts’ element. Furthermore, that word, although it is positioned after ‘bimbo’, is a word formed of eight letters and is thus longer than the word ‘bimbo’, which is formed of five letters. Furthermore, as the Board of Appeal stated in paragraph 20 of the contested decision, the word ‘doughnuts’ will attract the Spanish public’s attention since it appears unusual in Spanish owing, in particular, to the sequence of consonants ‘ghn’ which is atypical for the Spanish consumer.
81 It follows from all the foregoing that the ‘doughnuts’ element of the mark applied for is not negligible and must be taken into account in the comparison of the trade marks at issue.
– Visual similarity
82 In this case, the second element of the trade mark applied for – ‘doughnuts’ – and the earlier trade mark DOGHNUTS are very similar, even almost identical. They are relatively long words and the ‘doughnuts’ element of the mark applied for is differentiated only by the fact that the third letter of the word is the letter ‘u’, which is not found in the earlier trade mark.
83 Admittedly, that element is placed second in the trade mark applied for and the consumer generally pays greater attention to the beginning of a mark than to the end (see judgment of 11 May 2010 in Case T‑492/08 Wessang v OHIM – Greinwald (star foods), not published in the ECR, paragraph 46 and the case-law cited). In this case, the first element of the mark applied for, namely ‘bimbo’, and the earlier trade mark do not display any similarities.
84 However, since the second element of the trade mark applied for is almost identical to the earlier trade mark and since that element is longer than the first, the Board of Appeal was correct in concluding that there was an average degree of visual similarity between the marks at issue.
85 That average degree of visual similarity is not called into question by the applicant’s assertion that ‘bimbo’ is a trade mark with a reputation. Indeed, even if account is taken of any more important role that the element ‘bimbo’ may play in the trade mark applied for, the fact remains that the second element, which is an almost identical reproduction of the earlier trade mark, will also attract the Spanish consumer’s attention, in particular because of the sequence of consonants ‘ghn’, which looks very unusual to the part of the relevant public which is not familiar with English.
– Phonetic similarity
86 As the Board of Appeal noted, in paragraph 21 of the contested decision – without being challenged on this point by the applicant – the words ‘doughnuts’ and ‘doghnuts’ are pronounced almost identically. The two words share both the consonantal and, with one exception, the vowel sequence. The additional vowel ‘u’ in the second element of the trade mark applied for does not alter significantly either the length or the pronunciation of that word.
87 The first element of the trade mark applied for is not present in the earlier trade mark.
88 In this case, in view of the almost identical pronunciation of the second element of the trade mark applied for and the earlier trade mark, the Board of Appeal was correct in concluding that there was a medium degree of phonetic similarity.
– Conceptual similarity
89 In this case, the earlier trade mark DOGHNUTS has no meaning for the part of the relevant public which is not familiar with English. Similarly, the two elements comprising the mark applied for have no particular meaning for those consumers. Thus, a conceptual comparison of the signs is not possible, as the Board of Appeal noted in paragraph 22 of the contested decision.
The global assessment of the likelihood of confusion
90 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).
91 In this case, it was found that the goods in question were identical, that the marks at issue displayed an average degree of visual and phonetic similarity and that a conceptual comparison was not possible.
92 So far as the distinctiveness of the earlier trade mark was concerned, the Board of Appeal found it to be average. The applicant challenges that assessment. It submits that the word ‘doghnuts’ is descriptive and devoid of distinctive character. In that regard, the Court notes that the word ‘doghnuts’, like ‘doughnuts’, has no meaning for the part of the relevant public which is not familiar with English. The word ‘doghnuts’ will thus be regarded, like the word ‘doughnuts’, as a fanciful or foreign term.
93 Furthermore, it should be observed that a finding that the word ‘doghnuts’, which comprises the earlier trade mark (a registered and protected national mark), is descriptive or devoid of distinctive character in relation to the goods in question would not be compatible either with the coexistence of Community trade marks and national trade marks or with Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(2)(a)(ii) (see, to that effect, Case C‑196/11 P Formula One Licensing v OHIM [2012] ECR I‑0000, paragraphs 41, 44 and 45).
94 The Court must therefore reject the applicant’s arguments seeking to show that the earlier trade mark is not of average distinctiveness.
95 With regard to the applicant’s argument that ‘bimbo’ is the dominant element in the trade mark applied for, the following points should be made.
96 According to the case-law, 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 (Case C‑120/04 Medion [2005] ECR I‑8551, paragraph 37). There may also be a likelihood of confusion in a case in which the earlier mark is not reproduced identically in the later mark (see, to that effect, Joined Cases T‑5/08 to T‑7/08 Nestlé v OHIM – Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe) [2010] ECR II‑1177, paragraph 60).
97 In this case, the’doughnuts’ element, which is almost identical to the earlier trade mark, has an independent distinctive role in the mark applied for. Indeed, contrary to what is claimed by the applicant, that element is not devoid of distinctive character but on the contrary has average distinctive character for the part of the relevant public which is not familiar with English. Furthermore, since the’doughnuts’ element is wholly meaningless for that consumer, the mark applied for, BIMBO DOUGHNUTS, does not form a unitary whole or a logical unit on its own in which the ‘doughnuts’ element would be merged. The part of the relevant public which is not familiar with English will not be able to understand the sign at issue as meaning that the goods concerned are doughnuts produced by the undertaking Bimbo or by the proprietor of the trade mark BIMBO.
98 There is no relevance in this case in the applicant’s argument that, when the mark whose registration is sought is formed of several elements, one of which is descriptive and identical or similar to an earlier mark, the Court has always decided that registration should be granted. In fact, the ‘doughnuts’ element is not considered descriptive by the part of the relevant public which is not familiar with English.
99 Finally, since bakery and pastry products are everyday low-cost consumer goods, the public must be considered to have a somewhat reduced level of attention when purchasing them.
100 In the light of all those circumstances, in particular the identical nature of the goods and the average degree of visual and phonetic similarity between the trade marks at issue, the Board of Appeal was correct in concluding that there was a likelihood of confusion.
101 Consequently, the second plea in law must also be rejected, as must, therefore, the action as a whole.
3. The intervener’s third head of claim
102 By its third head of claim, the intervener asks the Court to declare that the Community trade mark applied for will not be registered.
103 In that regard, this judgment confirms the decision of the Board of Appeal, which itself dismissed the appeal against the Opposition Division’s decision allowing the intervener’s opposition. Thus, once this judgment has become final, OHIM’s decision allowing the intervener’s opposition will become final. The
fact that the trade mark applied for will not be registered thus follows automatically from this judgment.
104 In those circumstances, there is no need to adjudicate on the intervener’s third head of claim (see, to that effect, judgment of 19 January 2011 in Case T‑336/09 Häfele v OHIM – Topcom Europe (Topcom), not published in the ECR, paragraph 44).
Costs
105 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
106 Since the applicant has been unsuccessful and OHIM has applied for costs, the applicant must be ordered to pay, in addition to its own costs, those incurred by OHIM.
107 Since the intervener has not applied for costs against the applicant, it must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Bimbo SA to pay, in addition to its own costs, those incurred by OHIM;
3. Orders Panrico SA to bear its own costs.
Dittrich | Wiszniewska-Białecka | Prek |
Delivered in open court in Luxembourg on 10 October 2012.
[Signatures]