Judgment — ECLI:EU:T:2007:105
Date: 2007-04-18
Language of the case: English
Court formation: Fourth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Figurative marks applied for
Procedure: Action for annulment - unfounded

JUDGMENT OF THE COURT OF FIRST INSTANCE (Fourth Chamber) 18 April 2007 (*) (Community trade mark – Opposition proceedings – Applications for Community figurative marks ‘House of donuts’ – Earlier national word marks ‘DONUT’ and earlier figurative marks ‘donuts’ – Relative ground for refusal – Likelihood of confusion) In Joined Cases T‑333/04 and T‑334/04, House of Donuts International, established in George Town (Grand Cayman), represented by N. Decker, lawyer, applicant, v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Laitinen and A. Folliard-Monguiral, acting as Agents, defendant, the other party to proceedings before the Board of Appeal of OHIM, and intervener before the Court of First Instance, being Panrico, SA, established in Barcelona (Spain), represented by D. Pellisé Urquiza, lawyer, TWO ACTIONS brought against the decisions of the Fourth Board of Appeal of OHIM of 12 May 2004 (Cases R 1034/2001‑4 and R 1036/2001‑4) concerning opposition proceedings between Panrico, SA and House of Donuts International, THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber), composed of H. Legal, President, I. Wiszniewska-Białecka and E. Moavero Milanesi, Judges, Registrar: C. Kantza, Administrator, having regard to the applications lodged at the Registry of the Court of First Instance on 11 August 2004, having regard to the responses of OHIM lodged at the Court Registry on 21 December 2004, having regard to the responses of the intervener lodged at the Court Registry on 5 January 2005, having regard to the order of joinder of 19 April 2005, further to the hearing on 23 November 2006, gives the following Judgment Background to the disputes 1 Pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended, the company House of Donuts International (‘House of Donuts’ or ‘the applicant’) filed an application on 27 February 1997 at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for registration of the following figurative mark as a Community trade mark: 2 On 23 September 1998, pursuant to the same regulation, House of Donuts filed an application at OHIM for Community registration of the following figurative mark: 3 The first application was entered under the number 474 486 and the second under the number 938 670. 4 The goods and services in respect of which registration of the two marks was sought fall within Classes 30, 32, and 42 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 consist in the following: – Class 30: ‘Doughnuts, muffins, croissants, pastries, bread; baked confectionery products; and beverages included in class 30’; – Class 32: ‘Mineral and aerated waters; non-alcoholic drinks; fruit drinks and fruit juices’; – Class 42: ‘Restaurant, cafeteria and catering services’. 5 The two trade mark applications were published in the Community Trade Marks Bulletin on 8 February 1999 and 6 March 2000 respectively. 6 On the basis of Article 8(1)(b) of Regulation No 40/94, Panrico, SA filed notices of opposition to the registration of the two marks applied for, on 29 April 1999 and 5 June 2000 respectively. 7 The oppositions were based on the existence of a group of earlier Spanish marks registered by Panrico for the same classes of goods and services as those covered by the Community trade marks applied for: – the word mark DONUT, registered on 8 September 1962 under the number 399 563; – the figurative mark reproduced below, registered on 30 September 1972 under the number 643 273; – the word mark DONUT, registered on 5 March 1983 under the number 1 000 137; – the word mark DONUT, registered on 17 May 1983 under the number 1 000 138; – the figurative mark reproduced below, registered on 5 December 1991 under the number 1 582 809 8 By decisions of 25 October 2001, the Opposition Division allowed the two oppositions and rejected the two applications for registration of trade marks in respect of all the goods and services covered by the applications, on the ground that there was a likelihood of confusion in Spain. 9 Against those two decisions, House of Donuts brought appeals before OHIM which were lodged on 14 and 19 December 2001. 10 By decisions of 12 May 2004 (Cases R 1034/2001‑4 and R 1036/2001‑4), the Fourth Board of Appeal dismissed the two appeals on the ground, in each case, that there was a likelihood of confusion, because of the overall similarity of the conflicting marks and the distinctiveness of the earlier marks. Forms of order sought by the parties 11 During the hearing, House of Donuts abandoned its head of claim to the effect that the Court should order OHIM to register the two Community trade marks applied for, and this has been formally noted. 12 The applicant now claims that the Court should: – declare that the applications are admissible and well founded; – annul the decisions of 12 May 2004 of the Fourth Board of Appeal in Cases R 1034/2001-4 (Case T‑333/04) and R 1036/2001-4 (Case T‑334/04): – order Panrico to pay the costs. 13 OHIM and Panrico contend that the Court should: – dismiss the actions; – uphold the contested decisions and the refusal to register the two Community trade marks applied for; – order the applicant to pay the costs. Law Arguments of the parties 14 In support of its actions, House of Donuts relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94, in that the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of that provision, when, in fact, there is nothing capable of leading the Spanish consumer to think that the goods and services manufactured and provided by House of Donuts and by Panrico share a common origin. 15 House of Donuts does not dispute that Panrico’s marks are earlier than the marks applied for, nor that the range of goods and services falling within Classes 30, 32 and 42 covered by the various conflicting marks are identical. House of Donuts calls into question solely the similarity between the two Community trade marks applied for, on the one hand, and Panrico’s earlier marks, on the other. 16 According to the applicant, Panrico’s earlier marks are either word marks or device marks including the words ‘donut’ or ‘donuts’, while the two marks filed for registration are complex marks consisting of a figurative element, namely two umbrellas, combined with the words ‘House of donuts’ accompanied by their translation in Arabic (Case T‑333/04), or combined with the words ‘House of donuts’ and ‘The Finest American Pastries’ (Case T-334/04). 17 The applicant accepts that the Community marks applied for contain the word ‘donuts’. Nonetheless, even in Spain, the words ‘donut’ and ‘donuts’ – which describe a small ring-shaped cake cooked in fat and dusted with sugar – are generic and descriptive, as is shown both by the large number of internet sites identified using the search terms ‘donut’ and ‘Spain’, and by the trading name registration certificate No 41 330 in the Spanish intellectual property register, which classes donuts as goods. 18 According to the applicant, the word ‘donut’ has become a generic term in Spanish even though that development has not yet been recognised by the Diccionario de la LenguaEspañola (Dictionary of the Spanish Language) of the Real Academia Española (Royal Academy of Spain), relied on by Panrico in support of its argument to the contrary. Indeed, the 2001 edition of the dictionary Langenscheidts Handwörterbuch Spanisch-Deutsch (Spanish-German dictionary) translates the Spanish word ‘donut’ into German as ‘donut’, and the 1998 edition of the ConciseOxford Spanish Dictionary mentions the term ‘donut’ and then refers to the English word ‘doughnut’ which has two equivalents in Spanish, namely ‘donut’ and ‘rosquilla’. 19 If the descriptive nature of the term ‘donut’ is taken into account, there is no likelihood of confusion between the conflicting marks. The logo consisting of the two umbrellas together with the Arabic wording (Case T‑333/04), or with the expression ‘The Finest American Pastries’ (Case T-334/04), are the dominant elements of the Community trade marks applied for and are unique. 20 It follows, according to the applicant, that the two Community marks applied for are in their essential components different from Panrico’s earlier marks. 21 From a visual point of view, there is a substantial difference between the conflicting marks. 22 The terms ‘house of donuts’ and ‘donuts’ or ‘donut’ are also very different aurally. 23 Lastly, at the conceptual level, Panrico’s earlier marks are not identical to the Community trade marks applied for, since the figurative elements of the latter give them a different meaning. 24 The applicant submits that the overall impression conveyed by the marks filed for registration is thus very different from that conveyed by Panrico’s earlier marks. 25 OHIM and Panrico dispute the assertion that the only word element common to the conflicting marks is generic or descriptive. Contrary to the submissions of House of Donuts, the frequency with which the word ‘donut’ appears on the internet, particularly in connection with Spain or names of Spanish cities, does not demonstrate that ‘donut’ is generic in Spain. 26 According to OHIM and Panrico, the two dictionary entries which House of Donuts adduced for the first time before the Court of First Instance are neither admissible nor conclusive. 27 As regards the Spanish trading name certificate No 41 330, the word ‘donuts’ appears as a trade mark, in capital letters and between inverted commas. What is more, it is followed by the expression ‘pastas de bollería típicas americanas’ (American-style small pastries). That clarification shows that the word ‘donuts’ is not understood as such in Spain. 28 Moreover it is possible to infer from the very existence of the earlier marks DONUT and donuts that they were registered after successfully undergoing examination as to possible absolute grounds for refusal by the competent national authorities. Further, those marks have maximum distinctiveness given that they are very widely known and have a significant reputation. 29 OHIM and Panrico maintain that the Board of Appeal was fully entitled to find that the dominant element of the marks applied for was the word ‘donuts’, rather than the wording ‘house of’, or the Arabic script or the hovering stylised umbrellas (Case T‑333/04), or the umbrellas or the words ‘The Finest American Pastries’ (Case T‑334/04). 30 The word ‘donuts’, which is an understandable and distinctive word element, occupies a central position in the two marks filed for registration and is the element which the consumer will remember, whereas the figurative elements –which include the two handleless umbrellas hovering above the word ‘donuts’ – are, notwithstanding their large size, of secondary importance. 31 Although it is incorrect to say that ‘House of’ has no distinctive character for the Spanish public, that wording – printed in smaller letters and placed on the upper left hand side of the marks filed for registration – occupies a marginal and accessory position in comparison with the dominant element of those signs: ‘donuts’ (see, to that effect, Case T‑6/01, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 40). 32 The element ‘donuts’ of the mark filed for registration in Case T‑333/04 is printed using the Roman alphabet and thus can be read easily by the Spanish consumer. As it is printed in bold letters, it is very easy to discern when the mark applied for is viewed as a whole. The figurative elements consisting of two flying handleless umbrellas and the wording in Arabic are also of secondary importance in comparison with the dominant word element ‘donuts’. 33 Similarly, the element ‘donuts’ in the mark filed for registration in Case T‑334/04 is represented in bold and rather large letters, so that the word can be read easily by the Spanish consumer. On account of its position, it is very easy to discern when the mark applied for is viewed as a whole. The ancillary nature of the wording ‘House of’ stems from its being printed in very small letters which are scarcely legible and from its position on the upper left hand side of the mark filed for registration. The wording ‘The Finest American Pastries’ is noticeably smaller than the element ‘donuts’, so that the public will have difficulty in interpreting it correctly. Furthermore, that wording appears under the dominant and distinctive element, and for that reason the public will not pay any particular attention to it. 34 According to OHIM and Panrico, given that the conflicting marks have an element in common – ‘donut’ or ‘donuts’ – which is both dominant and, from the point of view of the relevant Spanish public, distinctive, there is actually a high degree of visual and aural similarity between them. A comparison of them at the conceptual level serves little purpose since the Spanish public is deemed to have little command of English (Case T‑104/01 Oberhauser v OHIM – PetitLiberto (Fifties) [2002] ECR II‑4359, paragraph 42). 35 It is contended that, since the elements ‘donut’ or ‘donuts’ form in essence the whole of the earlier marks and constitute the distinctive and dominant element in the marks filed for registration, there is indeed on the part of the Spanish public – on account of the overall similarity of the conflicting marks and of the great similarity or identity of the goods and products concerned – a likelihood of confusion as to the origin of those goods and services. Findings of the Court 36 Article 8(1)(b) of Regulation No 40/94 provides that upon opposition by the proprietor of an earlier trade mark, the Community 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 is to include the likelihood of association with the earlier trade mark. 37 A likelihood of confusion consists in the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 29, and Fifties, paragraph 34 above, paragraph 25). 38 The likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (Canon, paragraph 37 above, paragraph 16, and Fifties, paragraph 34 above, paragraph 26). 39 That global assessment implies some interdependence between the factors taken into account, and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Canon, paragraph 37 above, paragraph 17, and Fifties, paragraph 34 above, paragraph 27). 40 In general terms, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 23, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 25), namely the visual, aural and conceptual aspects. 41 In the present case, it is not disputed that the conflicting marks cover the same ranges of goods and services falling within Classes 30, 32 and 42, which must therefore be considered to be identical. 42 The earlier marks are registered in Spain, which thus constitutes the relevant territory for the purposes of the application of Article 8(1)(b) of Regulation No 40/94. 43 Since the earlier marks are protected in Spain and since the conflicting marks cover goods and services of ordinary consumption, it is appropriate, in order to assess the likelihood of confusion, to refer to the perception of the average Spanish consumer, deemed to be reasonably well informed and reasonably observant and circumspect. 44 The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, and only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (SABEL, paragraph 40 above, paragraph 23, and Case T‑355/02 Mühlens v OHIM – Zirh International(ZIRH) [2004] ECRII‑791, paragraph 41). 45 Moreover, the more distinctive the earlier mark, the greater will be the likelihood of confusion (SABEL, paragraph 40 above, paragraph 24). 46 Lastly, the assessment of the possible lack of distinctiveness of a trade mark rests as a rule on the facts which the parties have the obligation to provide. If the party against whom opposition proceedings are brought intends to rely on the fact that the mark of the party bringing the opposition lacks distinctiveness, it is bound to put forward facts and, if necessary, evidence which will enable OHIM to determine the truth of such a claim (see, to that effect, Case T‑57/03 SPAG v OHIM – Dann andBacker (HOOLIGAN) [2005] ECR II-287, paragraph 30). 47 Since such is its line of argument, it therefore fell to the applicant to establish that the Board of Appeal could not, in the light of the facts available to OHIM, find the earlier marks of Panrico to be distinctive, and that in the present case that absence of distinctiveness allowed the likelihood of confusion to be discounted. 48 On that point, the Board of Appeal took the view that, since the word ‘donuts’ is not generic in Spain, the average consumer perceives it as distinctive in relation to pastries, beverages and related services. The Board of Appeal thus found that the distinctiveness of the term in issue was moderate, neither particularly high nor particularly low. 49 In order to challenge that assessment the applicant relies on circumstantial evidence which is neither admissible nor relevant nor of any probative value. 50 That is so, first, as regards the presence of the word in dispute in two bilingual dictionaries – Spanish-German and Spanish-English – a circumstance relied on for the first time before the Court of First Instance and, accordingly, inadmissible as evidence, and moreover inapt as a means of showing to what degree the average consumer was familiar with a word of foreign origin. 51 That is so, secondly, as regards the circumstance that the term ‘donuts’ is frequently found on the internet in association with the word ‘Spain’, which cannot serve to show that the word is generic for Spanish consumers, since such research can just as well highlight expressions which are distinctive as those which are not. 52 That is so, thirdly, as regards the trading name registration certificate issued by the Spanish intellectual property office which, although it classes the goods in question as ‘donuts’, appends to that classification an explanation of the meaning of ‘donuts’ in Spanish, thus precluding its use as evidence of lack of distinctiveness for the average consumer concerned. 53 Accordingly, account being taken of the degree of familiarity of the Spanish public with the English language, which is generally held to be low (Fifties, paragraph 34 above, paragraph 42), the applicant fails to establish that the assessment undertaken by the Board of Appeal on the basis of the evidence available to it was incorrect, in so far as the word ‘donuts’ in the earlier marks was acknowledged to have a certain distinctiveness. 54 It follows that the Board of Appeal might well have used such distinctiveness as the basis for recognising that the word element ‘donuts’ – almost the sole constituent element of the earlier marks – is also a dominant element in the marks applied for, and as the basis for a comparison of the marks for the purposes of assessing the likelihood of confusion, by focussing its examination on ‘donuts’, the element common both to the earlier marks and to the marks applied for, and acknowledged as dominant in each of the marks under consideration. 55 In fact, if it were true that the distinctiveness of the common word element of the conflicting marks is particularly weak, the applicant would undoubtedly have been justified in maintaining that that word element was not dominant in the marks applied for, and that it was appropriate to accord at least equal importance to the other elements, both figurative and word – umbrellas, Arabic script, expressions in English – which make up the marks filed for registration. However, it follows from the foregoing considerations that, in the present case, it has not been established that the distinctiveness of the word ‘donuts’ is so very weak. 56 It follows that the arguments challenging the implications of attaching dominant character to that word element are irrelevant. 57 In fact, if it is accepted that the word ‘donuts’ is not in itself an inapt means of enabling the consumer to identify the origin of the goods covered by the mark – which is the very definition of the mark’s distinctiveness – it is obvious that that word dominates the overall impression which the average consumer would form when faced with the marks for which the applicant seeks registration: visually, since the other elements are peripheral; aurally, since none of the other elements is memorisable by the relevant public; and, lastly, conceptually, since the figurative and word adjuncts to the central word are essentially decorative. 58 Since the central and dominant element of the marks applied for is practically identical to that of the existing national marks, the only differences being the positioning of the word ‘donuts’ and the stylised lettering used, the assessment to that effect by the Board of Appeal cannot be criticised. 59 It follows from the foregoing that the Board of Appeal was entitled to find that, having regard to the fact that the goods and services at issue are identical, there is a likelihood of confusion on the part of the average Spanish consumer, in terms of Article 8(1)(b) of Regulation No 40/94, between the two Community trade marks applied for, on the one hand, and the earlier marks of Panrico, on the other. 60 The single plea in law alleging infringement of that provision must therefore be rejected and, in consequence, the present action must be dismissed. Costs 61 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by OHIM and Panrico. On those grounds, THE COURT OF FIRST INSTANCE (Fourth Chamber) hereby: 1. Dismisses the action; 2. Orders the applicant to pay the costs of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and of the intervener. Legal Wiszniewska-Białecka Moavero Milanesi Delivered in open court in Luxembourg on 18 April 2007. E. Coulon H. Legal Registrar President * Language of the case: English.