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What happens if a third party combines another person’s trade mark with another distinctive mark?

In its earlier decision in Medion, the Court of Justice of the European Union (“CJEU”) held that a composite sign (incorporating the trade mark) may still infringe an earlier registered trade mark where the trade mark had an independent distinctive role within the later composite sign.  It said that, in such cases, the public might be led to believe that the goods or services at issue derive from economically linked companies and that this was sufficient to establish a likelihood of confusion. In particular, it stated:

“..beyond the usual case where the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element”.

This issue came up again in Bimbo SA v OHIM, a case concerning Bimbo SA’s application to register the mark “BIMBO DOUGHNUTS” as a Community trade mark in class 30, namely “pastry and bakery products”.  The application was opposed by Panrico based on its earlier Spanish word mark “DOGHNUTS”, registered for “pastry products, round-shaped dough biscuits and preparations”.   Panrico was successful in its opposition and, on appeal, both the Board of Appeal and the General Court upheld the original decision.

Bimbo further appealed to the CJEU, arguing that the element “DOUGHNUTS” had only average distinctiveness in Spain and that the General Court wrongly concluded that it played an independent distinctive role within the “BIMBO DOUGHNUTS” mark.

The Advocate General reconsidered the interpretation of the CJEU’s judgment in Medion and stated that many subsequent judgments, especially judgments of the General Court, had extended the scope of the Medion judgment (i.e. the concept of “independent distinctive role”) beyond the few situations expressly contemplated in the Medion judgment.  He said that the Court was not introducing a derogation from the principles governing the assessment of likelihood of confusion, but the guidance was intended to mitigate the rigidity of certain earlier judgments. Therefore, he indicated that the impact of Medion was narrower than the wide interpretation given by other courts and tribunals.

The Advocate General concluded that a new interpretation of Medion was required and pointed out that the CJEU’s judgment in Medion was delivered in response to a request for a preliminary ruling.  The judgment in Medion merely stated that there was a possibility of a likelihood of confusion between an earlier trade mark and a later trade mark which contained the earlier trade mark as part of a composite sign.  He rejected the arguments of Bimbo and upheld the opposition.

We will be watching with interest to see if the CJEU provides further guidance on the scope of the Medion decision.

Roy Crozier, Partner in the intellectual property group, said, “It is important for clients to realise that they may not avoid a finding of infringement if they use a third party’s sign with their house mark or another distinctive element.  It is important to carry out a full availability search to determine if the proposed trade mark is free to use and does not infringe a third party’s trade mark rights”.