Examining whether any of the components of a composite sign has an independent distinctive role

TRADE MARK LAW

Independent distinctive role for non-descriptive element ‘doughnuts’ in trademark ‘Bimbo Doughnuts’
 

"29. Accordingly, the General Court did not conclude that there was a likelihood of confusion merely from the finding that, in the trade mark applied for, the ‘doughnuts’ element has an independent distinctive role, but based its conclusion in that regard on a global assessment that included the different stages of the examination required under the case-law referred to in paragraphs 19 to 25 above, and in the course of which it took into account the factors of the case. It thus correctly applied Article 8(1)(b) of Regulation No 40/94.
27 In paragraph 97 of that judgment, the General Court stated that, since the ‘doughnuts’ element is wholly meaningless for the relevant public, that element did not form, together with the other element of the sign, a unit having a different meaning as compared with the meaning of those elements taken separately. It accordingly found that the ‘doughnuts’ element still had an independent distinctive role in the trade mark for which registration was sought and had therefore to be taken into account in the global assessment of the likelihood of confusion."

Purpose of examining whether any of the components of a composite sign has an independent distinctive role is to determine which of those components will be perceived by the target public
 

33. Next, in so far as Bimbo argues that the General Court disregarded the rule that a finding that one component of a composite sign has an independent distinctive role constitutes an exception, that must be duly substantiated, to the general rule that the consumer normally perceives a trade mark as a whole, it should be pointed out that the purpose of examining whether any of the components of a composite sign has an independent distinctive role is to determine which of those components will be perceived by the target public."

This determination is to be undertaken before the global assessment of the likelihood of confusion of the signs at issue
 

"35. The determination of which components of a composite sign contribute to the overall impression made on the target public by that sign is to be undertaken before the global assessment of the likelihood of confusion of the signs at issue. Such an assessment must be based on the overall impression produced by the trade marks at issue, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, as has been stated in paragraph 21 above. Therefore, this does not involve an exception, that must be duly substantiated, to that general rule."

IPPT20140508, CJEU, Bimbo v BHIM

C591/12 P - ECLI:EU:C:2014:305