4

The background to the dispute is summarised as follows in paragraphs 1 to 14 of the judgment under appeal: ‘1 On 25 May 2006, [Bimbo] filed an application for registration of a Community trade mark with [OHIM] under [Regulation No 40/94], as amended (replaced by [Regulation No 207/2009]). 2 The trade mark for which registration was sought is the word sign BIMBO DOUGHNUTS. 3 The goods for which registration was sought are in Class 30 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 correspond to the following description: “pastry and bakery products, specially doughnuts”. 4 The Community trade mark application was published in Community Trade Marks Bulletin No 42/2006 of 16 October 2006. 5 On 16 January 2007, [Panrico] filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above. 6 The opposition was based on a number of earlier national and international word and figurative trade marks. In particular, it was based on the Spanish word mark DOGHNUTS, registered on 18 June 1994 under No 1288926 for goods within Class 30 corresponding to the following description: “all kinds of confectionary 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”. 7 The grounds raised in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009. 8 On 25 May 2009, the Opposition Division allowed the opposition. 9 On 24 July 2009, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. 10 By [the contested decision], the Fourth Board of Appeal [(“the Board of Appeal”)] dismissed the appeal. Like the Opposition Division, the Board of Appeal merely compared the trade mark applied for with the earlier Spanish word mark DOGHNUTS (“the earlier trade mark”) and concluded on that basis that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. 11 The Board of Appeal noted that “doughnut” was an English word meaning a “ring-shaped small spongy cake made of dough”. According to the Board of Appeal, the word does not exist in Spanish, where its equivalents are “donut” or “rosquilla”. The Board of Appeal took the view that, for the average Spanish consumer (excluding those who speak English), the word “doughnut” did not describe the goods in question or their qualities and did not have any particular connotation in relation to them. In the Board’s view, the earlier sign (like the sign applied for) would be perceived as a foreign or fantasy term by most consumers. 12 The Board of Appeal also considered the signs at issue to be similar, to the extent that the earlier trade mark was incorporated almost identically in the mark applied for. It considered there to be an average degree of visual and phonetic similarity between the marks at issue. In its view a conceptual comparison was not possible. 13 The Board considered that the goods covered by the marks at issue were identical and that the earlier trade mark had an average degree of distinctiveness. 14 Taking account of the average distinctiveness of the earlier trade mark, the Board of Appeal concluded that, in an overall appraisal of the likelihood of confusion, owing to the average degree of visual and phonetic similarity between the signs, there was a likelihood of confusion on the part of the relevant consumers for all the goods at issue, which were found to be identical.’