EUIPO declares Banksy’s ‘Flower Thrower’ trade mark invalid
The famous graffiti artist’s trade mark was cancelled on the grounds that it was filed in bad faith.
On 25 May 2006, Bimbo SA applied to register BIMBO DOUGHNUTS as a CTM in respect of ‘pastry and bakery products, specially doughnuts’ in class 30. The application was successfully opposed by Panrico SA on the basis of its earlier rights which included Spanish national trade mark registration of DOGHNUTS covering ‘all kinds of confectionery 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’. The OHIM found that the two marks were similar and there was a likelihood of confusion on the part of the public. This decision was upheld by both the OHIM’s Board of Appeal and the General Court who referred to the Medion decision in finding a likelihood of confusion.
According to the Medion decision, 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.
Bimbo appealed to the CJEU arguing that the General Court had misapplied Medion when it found that, since DOGHNUTS is meaningless to the average Spanish consumer, the DOUGHNUTS element plays an independent, distinctive role within the mark applied for.
The Advocate General proceeded to consider the case law surrounding Medion and noted that its scope has been interpreted more widely than originally intended, namely, use by a third party, where the goods are identical, of a composite sign in which a reproduction of an earlier trade mark of independent distinctiveness is juxtaposed with the company name of that third party or a mark belonging to that third party.
The Advocate General therefore proposed a new interpretation of Medion, suggesting that it merely states, in essence, that the possibility of a likelihood of confusion cannot automatically be ruled out in cases where an earlier trade mark, albeit not the dominant element of a composite sign, retains a role in that sign of such a kind that ‘the origin of the goods or services covered by the composite sign is attributed by the public also to the owner of that mark’.
Having said that, the Advocate General did not believe that the General Court had erred in its appreciation of the likelihood of confusion between BIMBO DOUGHNUTS and DOGHNUTS and therefore rejected the appeal.
We welcome further clarification of the scope of the Medion decision which has, in the past, been interpreted more widely than intended. However, it is the decision that BIMBO DOUGHNUTS and DOGHNUTS can be deemed similar in respect of ‘pastry and bakery products, specially doughnuts’ that we find difficult to understand and accept. If an application was made to register DOUGHNUTS as a CTM in respect “doughnuts” it would undoubtedly be objected to on the grounds that the mark was descriptive and devoid of any distinctive character. It is difficult to accept, therefore, that the term DOUGHNUTS can have any independent distinctive role when juxtaposed with BIMBO in respect of goods in class 30. In our view, the two marks should never have been found confusingly similar in the first place.
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