"Bimbo, get a (Thomson) Life!"

With so much going on at the moments, and with so many members of the Kat team tied up in other ventures, it was good to know that we had a friend we could call on when an interesting and potentially important item popped up and there was no-one available to write it up.  Thanks and a hearty katpat accordingly go to our friend and long-time blog reader Aaron Wood (Trade Mark Attorney, Swindell & Pearson Ltd) for answering our miao-de-coeur and producing the following note:

BIMBO, Get a (Thomson) Life!

The Court of Justice of the European Union (CJEU)'s Medion decision [Case C-120/04, noted by the IPKat here] has been the subject of some consternation for trade mark applicants, and in Case C-591/12 P, the case of BIMBO DOUGHNUTS, they were left in a hole. This morning Advocate-General Mengozzi delivered his opinion on Bimbo’s appeal to the CJEU which was based on an allegation that the General Court had misapplied the Medion case and had, as a result, failed to take into account the relevant factors in this case [for a report on the proceedings before the General Court see the earlier Katnote here]. 

The case relates to Panrico’s opposition to Bimbo’s application to register the mark BIMBO DOUGHNUTS based upon its own registration of DOGHNUTS. The earlier registration covered ‘pastry products and preparations …; … round-shaped dough biscuits …” while the application covered ‘pastry and bakery products, specially doughnuts’.

Medion may be briefly summarised as deciding that, where a later mark uses an earlier mark in a composite sign which includes the name of the applicant company and the earlier mark has an independent distinctive role in the composite sign (without necessarily constituting the dominant element), a likelihood of confusion cannot be ruled out. Unfortunately, this is not how most people remember that case.

Bimbo argued that Medion had been misapplied and misunderstood by the General Court as meaning that, where an element is distinctive and does not combine with other elements to form a conceptually distinct whole, it has a distinctive independent whole. This, it said, goes beyond the terms of the decision in Medion and ignores the circumstances of the case.

The Advocate General proceeded to consider the case law surrounding Medion and noted that the application of this case has been inconsistent, going far beyond the limited terms on which that decision was given, namely only where there was: identical goods; reproduction of an earlier mark of independent distinctiveness; juxtaposition with a company name or the trade mark of a third party. By way of an analogy with Medion, a “rule” had developed in which Medion is applied to the use of an earlier mark as part of a composite later mark even where reproduction is not identical. Equally, the Advocate General concluded that the “independent distinctive role” element has at times morphed into other legal tests and that at times there has been too quick a step to conclude that similarity occurs where there is the inclusion of the earlier mark.

With that in mind, the Advocate General recommended a new interpretation of Medion and reminded the Court that the ruling in Medion was given in the context of a reference for preliminary ruling – it merely concluded, in essence, that the inclusion of other elements (perhaps even ones which were dominant) did not mean that a likelihood of confusion could be ruled out where the earlier mark retained an independent role. The Advocate General reminded us that the question of the existence (or otherwise) of an existence of confusion could not be answered by reliance on such rules.

That said, the Advocate General did not believe that the General Court had erred in its appreciation of the likelihood of confusion and, for this reason. the appeal should be rejected.

Make the perfect doughnut here and here
Doughnuts or bagels? Here