Opinion of the Advocate General — ECLI:EU:C:2014:34
Date: 2014-01-23
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible
Origin: Spain

summary fashion, the overall impression conveyed by the mark which is likely to remain in the mind of the consumer and to influence his subsequent purchase choices. That act of summarising is indispensable, even in the case of marks comprising a number of distinctive elements, each of which – considered separately – contributes to, but does not determine, the overall impression created by the mark. It is also necessary in the circumstances described in Medion, that is to say, in situations where a sign belonging to a third party combines an earlier trade mark with the company name of that third party. (44) More generally, the important factor is not so much the role within the later sign of the element which reproduces the earlier trade mark as the likelihood that that element will be independently perceived and remembered by the public in the context of that sign. 26. Secondly, regardless of the role of the earlier trade mark in the overall impression conveyed by the later sign, it is still necessary for the likelihood of confusion to be assessed, not in the abstract, but in the light of all of the relevant factors of the particular case, including, in particular, in addition to the visual, phonetic and conceptual similarities between the signs at issue, the nature of the goods and services in question; marketing methods; the attention level of the relevant public (whether high or low); and the habits of that public in the sector concerned. (45) It follows that it is not possible automatically to infer from the fact that the earlier trade mark retains an independent distinctive role within the later composite mark that there is a likelihood of confusion between the signs at issue. (46) In particular, the need to protect the earlier trade mark does not make it permissible to dispense with the assessment of whether such a likelihood exists, as is moreover clear, in my view, from paragraphs 31 and 36 of Medion. 27. I shall now, on the basis of the principles set out above, examine the complaints raised by Bimbo in the first part of its single ground of appeal. d) Analysis of the complaints 28. First, Bimbo argues that the General Court did not examine all the facts of the case before concluding that the ‘doughnuts’ element had an independent distinctive role, as referred to in Medion, within the sign in respect of which registration is sought. In that regard, I note as a preliminary point that paragraphs 96 and 97 of the judgment under appeal (on which this complaint focuses) represent a response to Bimbo’s argument that the ‘bimbo’ component is the dominant element of the mark applied for. In that context, the references made to Medion in those paragraphs must be regarded as references to the principle, established in that judgment, that the finding that there is a likelihood of confusion cannot be made subject to the condition that the overall impression created by the composite sign be dominated by the part of it which is represented by the earlier trade mark. (47) In other words, the General Court wished to make it clear that, even if – as Bimbo maintains – the ‘bimbo’ component were the dominant element, that would not be sufficient to make it irrelevant for the purposes of assessing the likelihood of confusion with the ‘doughnuts’ component. The General Court came to a similar conclusion in paragraph 81 of the judgment under appeal, in which it stated that, since the ‘doughnuts’ element is not negligible in the overall impression created by the mark applied for, it must be taken into account in the comparison of the signs at issue. 29. That being so, I do not think that the General Court erred in law by linking, in paragraph 97 of the judgment under appeal, the independent distinctive role of the ‘doughnuts’ element within the mark applied for to the degree of distinctiveness of that component and the fact that it does not combine with the other component of that trade mark to form a conceptually distinct whole. First, that paragraph must be read in the light of the findings already made by the General Court concerning the degree to which the ‘doughnuts’ element will (i) attract the public’s attention and will therefore be independently perceived by that public and (ii) contribute to the overall impression created by the mark (see, in particular, paragraphs 79 to 81, 85, 86 and 92). Secondly, as will be seen more clearly from my examination of the second part of the single ground of appeal, the General Court did not automatically infer from the finding that the ‘doughnuts’ element had an independent distinctive role that there was a likelihood of confusion. 30. As regards the second complaint, alleging that the General Court unduly widened the scope of Medion, it stems from a different interpretation of that judgment to the one proposed in this Opinion and is therefore, in my view, based on a premiss that is legally incorrect. 31. On the basis of all of the foregoing, I propose that the Court reject the first part of the single ground of appeal as unfounded. B – Second part of the single ground of appeal: failure to take account, in the assessment of the likelihood of confusion, of all the relevant aspects 1. Arguments of the parties 32. First, Bimbo submits that the General Court based its conclusions regarding the existence of a likelihood of confusion purely on the finding – or rather, the assumption – that the ‘doughnuts’ element had an independent distinctive role and failed to take account of any other relevant factors, including, in particular: the fact that the ‘bimbo’ element is not only a company name but also a trade mark with a reputation in Spain in connection with the goods in respect of which registration has been sought; the fact that that element appears at the beginning of the mark applied for; the low level of distinctiveness of the earlier trade mark; and the fact that the earlier trade mark is not reproduced identically in the mark applied for. In particular, in Bimbo’s submission, the fact that the first element of the mark applied for is itself a trade mark with a reputation should have led the General Court to conclude that there was no likelihood of confusion between the signs at issue, as was found by the Court of Justice in Becker v Harman International Industries. 33. Secondly, Bimbo submits that the judgment under appeal is vitiated by failure to state adequate reasons in that the General Court did not explain why the relevant public would be minded to disregard the first element of the composite mark, which indicates the – widely known – commercial origin of the goods in question, and to believe that those goods originate from the owner of the earlier trade mark or from economically-linked undertakings. 34. Thirdly, Bimbo emphasises that the context in which the Court delivered its judgment in Medion is different from the context of the present case in which – by contrast with the electronic goods sector – it is unusual for competing companies to enter into economic relations. 35. OHIM and Panrico contend that Bimbo’s arguments are in part inadmissible and in part manifestly unfounded. 2. Analysis 36. Although I agree with Bimbo’s premiss that Medion does not authorise either derogation from the criterion relating to the overall impression created by the composite mark or dispensing with a global assessment of the likelihood of confusion, it seems to me that the complaints which it puts forward in this part of its single ground of appeal are unfounded. 37. Indeed, from an overall reading – and not a selective reading, as proposed by Bimbo – of the judgment under appeal, it is clear that the General Court did not infer that there was a likelihood of confusion from the mere finding that the ‘doughnuts’ element has an independent distinctive role within the mark applied for; instead, the General Court based its finding on many factors emerging from an overall assessment undertaken in accordance with the case-law which it itself cited in paragraph 51 of that judgment. 38. Contrary to Bimbo’s assertions, when comparing the marks at issue, the General Court took into account both the alleged reputation of the BIMBO trade mark and the fact that that trade mark is the first of the two elements which make up the mark applied for. As regards the former factor, while not ruling out the possibility that the fact that one element of a composite sign is a trade mark with a reputation may play a part in the appraisal of the relative weight of the various elements of that sign, the General Court none the less stated that that fact does not automatically mean that the comparison of the marks at issue must be limited to considering that element alone, if it becomes apparent that the other elements of the sign are not negligible in the overall impression created by that sign. (48) As regards the latter factor, the General Court held in paragraphs 80, 83 and 84 of the judgment under appeal that, although the ‘doughnuts’ element appears after the ‘bimbo’ element in the mark applied for, it is still capable of attracting the Spanish public’s attention, as it is longer and the consonant sequence ‘ghn’ is unusual in Spanish, and must therefore be taken into account when assessing the visual similarity between the signs at issue. On that point, those factual findings cannot be reviewed by the Court of Justice on appeal. 39. Contrary to Bimbo’s assertions, the General Court also took account of the fact that the earlier trade mark was not reproduced identically in the mark applied for, pointing out in paragraph 82 that the only difference between the earlier trade mark and the element reproducing it was the third letter in a relatively long word. The General Court observed that such a difference did not significantly alter either the length or the phonetic pronunciation of the word in question. 40. As regards the argument that the ‘bimbo’ element is not only a company name but also a trade mark with a reputation in Spain in connection with the goods in question, I note that Bimbo does not draw any specific legal conclusions from that fact. If Bimbo intends on that basis to distinguish the present case from the case before the referring court in Medion, I would point out that, in the scheme of the judgment delivered in that case, it is completely irrelevant whether the earlier trade mark is combined in a composite sign with the company name of a third party or with a trade mark owned by a third party: in paragraph 36 of that judgment, the Court placed the two situations on an even footing and also it was clear from the statements made by the referring court that incorporating a company name into a trade mark was the usual practice in the sector of the goods at issue, with the result that the company name thus incorporated lost its usual role of a sign identifying a company and took on the role of a component identifying a product. (49) 41. In its overall assessment of the likelihood of confusion, the General Court took account of the degree of visual and phonetic similarity between the signs at issue (which was identified as being average); the identical nature of the goods (paragraph 91); the average distinctiveness of the earlier trade mark (paragraphs 92 and 95 to 97); the nature of the goods in question; and the rather low level of attention of the public when purchasing such goods (paragraph 99). Lastly, making reference to all of those factors (especially the average visual and phonetic similarities between the signs and the identical nature of the goods), the General Court found that there was a likelihood of confusion. 42. In those circumstances, I do not think the General Court can be accused of having automatically inferred from the fact that the ‘doughnuts’ element had an independent distinctive role within the mark applied for that there was a likelihood of confusion between the signs at issue; nor can it be thought to have failed to undertake an overall assessment of the likelihood of confusion. 43. The complaint that the judgment under appeal does not contain an adequate statement of reasons must also be rejected. The General Court’s reasons for rejecting Bimbo’s arguments relating to the decisive character of the alleged dominance of the word ‘bimbo’ in the mark applied for are set out in paragraphs 95 to 97 of the judgment under appeal and in paragraphs 76 to 81 of that judgment. 44. Lastly, there is no factual basis, to my way of thinking, for Bimbo’s argument that Medion cannot be applied to the present case in view of the differing commercial practices in the electronic entertainment goods sector and the pastry and confectionery sector. Indeed, contrary to Bimbo’s assertions, there is nothing in the judgment or the Opinion in that case to suggest that the frequency of economic relations between companies operating on the market in question formed any part of the factual context of the case as described by the referring court. Rather, as has already been highlighted in point 40 above, that court had observed that the usual practice with regard to designations in the relevant product sector was for the manufacturer’s name – which would otherwise have been of secondary importance in terms of the overall impression conveyed by a composite trade mark, given that the public usually identifies the actual product designation from another component of the sign – to predominate. (50) The existence of such commercial practices in the sector of the goods at issue – which, if proved, must certainly be taken into consideration as a relevant factor in the overall assessment of the likelihood of confusion – has not been established or even put forward as an argument by Bimbo. 45. On the basis of all of the foregoing, I propose that the Court also reject as unfounded the second part of the single ground of appeal. V – Conclusions 46. In the light of the considerations set out above, I propose that the Court dismiss the appeal and order Bimbo to pay the costs. 1 – Original language: Italian. 2 – Case T‑569/10 (ECR). 3 – Case R 838/2009‑4. 4 – Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). With effect from 13 April 2009, Regulation No 40/94 has been replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). 5 – Case C‑120/04 Medion [2005] ECR I‑8551. 6 – First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). 7 – Paragraphs 25 to 27. 8 – Paragraphs 27 and 28. 9 – The Court was citing, in particular, Case C‑251/95 SABEL [1997] ECR I‑6191; Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819; and the Order in Case C‑3/03 P Matratzen Concord v OHIM [2004] ECR I‑3657. 10 – Paragraphs 31 and 36. 11 – Paragraphs 32 to 34. 12 – See, inter alia, Case C‑655/11 P Seven for all mankind v Seven [2013] ECR, paragraphs 71 and 72; Case C‑254/09 P Calvin Klein Trademark Trust v OHIM [2010] ECR I‑7989, paragraphs 43 to 45; Joined Cases C‑202/08 P and C‑208/08 P American Clothing Associates v OHIM and OHIM v American Clothing Associates [2009] ECR I‑6933, paragraph 61; and Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraphs 33, 35 and 41. See also the Order in Case C‑67/11 P DTL v OHIM [2011] ECR I‑156, paragraphs 39 to 41; the Order in Case C‑579/08 P Messer Group v Air Products and Chemicals [2010] ECR I‑2, paragraph 71; and the Order in Case C‑210/08 P Sebirán v OHIM and El Coto De Rioja [2009] ECR I‑6, paragraph 35. As regards the General Court, see, inter alia, its judgment of 16 May 2007 in Case T‑491/04 Merant v OHIM – Focus Magazin verlag (FOCUS), not published in the ECR, paragraphs 43 and 44. 13 – Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 34; Order in Matratzen Concord v OHIM, paragraph 32; and Medion, paragraph 29. See, to that effect, Case C‑193/06 P Nestlé v OHIM [2007] ECR I‑114, paragraph 42, and OHIM v Shaker, paragraph 41. 14 – As I have already emphasised in point 16 above, in paragraph 34 of Medion the Court expressly refers not only to a situation where an earlier trade mark is combined with the company name of a third party in a later composite sign, but also to a situation where the second component added is a mark (with a reputation) owned by that third party. 15 – See the judgment of the General Court of 29 September 2011 in Case T‑107/10 Procter & Gamble Manufacturing Cologne v OHIM – Natura Cosméticos (NATURAVIVA), not published in the ECR, paragraph 43, and the judgment of the General Court of 13 September 2010 in Case T‑366/07 Procter & Gamble v OHIM – Prestige Cosmetics (P&G PRESTIGE BEAUTE), not published in the ECR, paragraph 82. 16 – See, to that effect, Case T‑109/07 L’Oréal v OHIM – Spa Monopole (SPA THERAPY) [2009] ECR II‑675, paragraph 19; Case T‑247/11 FairWild Foundation v OHIM – Wild (FAIRWILD) [2013] ECR, paragraph 49; Case T‑348/10 Panzeri v OHIM – Royal Trophy (Royal Veste e premia lo sport) [2012] ECR, paragraph 33; Joined Cases T‑5/08 to T‑7/08 Nestlé v OHIM – Master Beverage Industries (Golden Eagle) [2010] ECR II‑1177, paragraph 60; judgment of the General Court of 18 May 2011 in Case T‑376/09 Glenton España v OHIM – Polo/Lauren (POLO SANTA MARIA), not published in the ECR, paragraph 34; Case T‑169/10 Grupo Osborne v OHIM – Industria Licorera Quezalteca (TORO XL) [2012] ECR, paragraph 27; Case T‑231/12 Rocket Dog Brands v OHIM – Julius K9 (JULIUS K9) [2013] ECR, paragraph 30; Case T‑212/07 Harman International Industries v OHIM – Becker (Barbara Becker) [2008] ECR II‑3431, paragraphs 37 and 41; and Case T‑460/07 Nokia v OHIM – Medion (LIFE BLOG) [2010] ECR II‑89, paragraph 73. 17 – See the Order in Case C‑23/09 P ecoblue v OHIM and Banco Bilbao Vizcaya Argentaria [2010] ECR I‑7, paragraph 45, and the Order in Case C‑353/09 P Perfetti Van Melle SpA v OHIM [2011] ECR I‑12, paragraph 34. In that regard, although Advocate General Cruz Villalon interprets paragraph 30 et seq. of Medion as an exception to the principle that a consumer perceives a mark as a whole, he has come to the same conclusion in his Opinion in Case C‑51/09 P Becker v Harman International Industries [2010] ECR I‑5805, points 53, 55 and 56: see also, by implication, paragraphs 34 to 39 of the judgment in that case. 18 – Reproduced in every aspect; see Rocket Dog Brands v OHIM – Julius K9 (JULIUS K9), paragraph 31, and Focus Magazin Verlag v OHIM – Editorial Planeta (FOCUS Radio), paragraph 40. See, by way of (implied) contrast, the judgment of the General Court of 16 September 2009 in Joined Cases T‑305/07 and T‑306/07 Offshore Legends v OHIM – Acteon (OFFSHORE LEGENDS in black and white and OFFSHORE LEGENDS in blue, black and green), not published in the ECR, paragraph 86. 19 – See Panzeri v OHIM, paragraph 33; Nestlé v OHIM – Master Beverage Industries (Golden Eagle), paragraph 60; Glenton España v OHIM – Polo/Lauren (POLO SANTA MARIA), paragraph 34; and Grupo Osborne v OHIM – Industria Licorera Quezalteca (TORO XL), paragraph 27. See, by way of contrast, the judgment of the General Court of 14 July 2011 in Case T‑160/09 Winzer Pharma v OHIM – Alcon (OFTAL CUSI), not published in the ECR. 20 – See Glenton España v OHIM – Polo/Lauren (POLO SANTA MARIA), paragraph 54. See also, to that effect, Case T‑99/06 Phildar v OHIM – Comercial Jacinto Parera (FILDOR) [2009] ECR, paragraph 43, in which the General Court confirmed that the Board of Appeal was right to use that concept in order to determine the prominence of the figurative component in the overall impression given by the earlier trade mark. 21 – See the judgment of the General Court of 13 April 2011 in Case T‑228/09 United States Polo Association v OHIM – Textiles CMG (U.S. POLO ASSN.), not published in the ECR, paragraph 38, upheld in Case C‑327/11 P United States Polo Association v OHIM [2012] ECR, in which the Court states, in paragraph 52, that the General Court had not applied Medion in United States Polo Association v OHIM – Textiles CMG (U.S. POLO ASSN.). 22 – See, for example, Harman International Industries v OHIM – Becker (Barbara Becker), paragraph 37, and FairWild Foundation v OHIM – Wild (FAIRWILD), paragraph 50. 23 – See Glenton España v OHIM – Polo/Lauren (POLO SANTA MARIA), paragraph 54. 24 – See the Order in Perfetti Van Melle v OHIM, paragraph 37. 25 – Grupo Osborne v OHIM–Industria Licorera Quezalteca (TORO XL), paragraph 42. 26 – See, for example, Nestlé v OHIM – Master Beverage Industries (Golden Eagle), paragraphs 60 to 63, and Offshore Legends v OHIM – Acteon (OFFSHORE LEGENDS in black and white and OFFSHORE LEGENDS in blue, black and green), paragraphs 82 to 86. 27 – See, for example, the judgment of the General Court of 27 November 2007 in Case T‑434/05 Gateway v OHIM – Fujitsu Siemens Computers (ACTIVY Media Gateway), not published in the ECR, paragraph 49, upheld in Case C‑57/08 P Gateway v OHIM and Fujitsu Siemens Computers [2008] ECR I‑188 (summary publication), and Case T‑10/09 Formula One Licensing v OHIM – Global Sports Media (F1 – LIVE) [2011] ECR II‑427, paragraph 51; its finding relating to the descriptive character of the component corresponding to the earlier trade mark was set aside by the Court of Justice (see Case C‑196/11 P Formula One Licensing v OHIM [2012] ECR). 28 – See, for example, Grupo Osborne v OHIM – Industria Licorera Quezalteca (TORO XL), paragraph 42. 29 – See, for example, Case T‑63/09 Volkswagen v OHIM – Suzuki Motor (SWIFT GTi) [2012] ECR, paragraph 111; Offshore Legends v OHIM – Acteon (OFFSHORE LEGENDS in black and white and OFFSHORE LEGENDS in blue, black and green), paragraph 82; and, by implication, the Order in Case C‑235/05 P L’Oréal v OHIM [2006] ECR I‑57, paragraph 32). 30 – See, for example, Procter & Gamble Manufacturing Cologne v OHIM – Natura Cosméticos (NATURAVIVA), paragraph 43; Grupo Osborne v OHIM – Industria Licorera Quezalteca (TORO XL), paragraph 40; judgment of the General Court of 19 May 2010 in Case T‑243/08 Ravensburger v OHIM – Educa Borras (EDUCA Memory game), not published in the ECR, paragraphs 33 to 42, upheld in the Order in Case C‑370/10 P Ravensburger v OHIM [2011] ECR I‑27; see also, by way of contrast, the judgment of the General Court of 1 July 2009 in Case T‑16/08 Perfetti Van Melle v OHIM – Cloetta Fazer (CENTER SHOCK), not published in the ECR, paragraphs 44 to 48, upheld in the Order in Perfetti Van Melle v OHIM, paragraph 37. 31 – Panzeri v OHIM – Royal Trophy (Royal Veste e premia lo sport), paragraph 33; Nestlé v OHIM – Master Beverage Industries (Golden Eagle), paragraph 60; and Glenton España v OHIM – Polo/Lauren (POLO SANTA MARIA), paragraph 34. 32 – Volkswagen v OHIM – Suzuki Motor (SWIFT GTi), paragraph 109; Gateway v OHIM – Fujitsu Siemens Computers (ACTIVY Media Gateway), paragraph 49; judgment of the General Court of 9 September 2011 in Case T‑197/10 BVR v OHIM – Austria Leasing (Austria Leasing Gesellschaft m.b.H. Mitglied der Raiffeisen-Bankengruppe Österreich), not published in the ECR, paragraph 61; and judgment of the General Court of 9 September 2011 in Case T‑199/10 DRV v OHIM – Austria Leasing (Austria Leasing Gesellschaft m.b.H. Mitglied der Raiffeisen-Bankengruppe Österreich), not published in the ECR, paragraph 61. 33 – Case T‑385/09 Annco v OHIM – Freche et fils (ANN TAYLOR LOFT) [2011] ECR II‑455, paragraphs 49 and 50, and Volkswagen v OHIM – Suzuki Motor (SWIFT GTi), paragraph 113. 34 – Case T‑42/09 A. Loacker v OHIM – Editrice Quadratum (QUADRATUM) [2012] ECR, paragraphs 34 and 35. 35 – See Medion, paragraph 34. 36 – See the judgment of the General Court of 30 November 2006 in Case T‑43/05 Camper v OHIM – JC (BROTHERS by CAMPER), not published in the ECR, paragraph 65 et seq.. 37 – Such as national laws on unfair competition; see point 40 of Advocate General Jacobs’ Opinion. 38 – Medion, paragraph 36. 39 – In paragraph 33 of Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), as referred to by Advocate General Jacobs in his Opinion in Medion, the General Court found that ‘a complex trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark, unless that component forms the dominant element within the overall impression created by the complex mark’. However, immediately afterwards it stated that ‘that approach does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark’, but rather that ‘such a comparison must be made by examining the marks in question, each considered as a whole’, while bearing in mind that ‘the overall impression created in the mind of the relevant public by a complex trade mark [may], in certain circumstances, be dominated by one or more of its components’ (paragraph 34). 40 – Cited in footnote 12. 41 – See paragraph 42. That principle was already implicit in the General Court’s definition of the concept of a ‘dominant element’ as provided in paragraph 34 of Matratzen Concord v OHIM – Hukla Germany (MATRATZEN). 42 – See, for example, Calvin Klein Trademark Trust v OHIM, paragraphs 56 and 57; Nestlé v OHIM, paragraphs 41 to 43; and DTL v OHIM, paragraph 41. 43 – See SABEL, paragraph 23; Lloyd Schuhfabrik Meyer, paragraph 25; and Medion, paragraph 28. 44 – See the Order in Case C‑532/10 P adp Gauselmann v OHIM [2011] ECR I‑94, paragraph 43, and the Order in Case C‑204/10 P Enercon v OHIM [2010] ECR I‑156, paragraphs 23 to 26. 45 – See SABEL, paragraph 22, and Annco v OHIM – Freche et fils (ANN TAYLOR LOFT), paragraph 50. 46 – See, to that effect, Annco v OHIM – Freche et fils (ANN TAYLOR LOFT), paragraph 49; L’Oréal v OHIM – Spa Monopole (SPA THERAPY), paragraph 29; and Volkswagen v OHIM – Suzuki Motor (SWIFT GTi), paragraph 113; see also Becker v Harman International Industries, paragraph 40. 47 – See Medion, paragraph 32. 48 – Paragraphs 77 and 78. 49 – See points 9 and 10 of Advocate General Jacobs’ Opinion. 50 – See points 8 to 10 of Advocate General Jacobs’ Opinion.