When Is a Doughnut Not Necessarily a Doughnut?

Authors: Kristina Vilkiene, Assistant Attorney-at-Law in METIDA, Inga Lukauskienean Associated Partner, an Attorney-at-Law and a Patent Attorney in METIDA

metida_spurgaA clear meaning of a trademark or its descriptive character is an obstacle to achieving its registration. Yet, like all other rules, this rule has an exception.  Thus, one might ask, when a word that semantically refers to particular goods or services can be treated as a non-descriptive trademark. The answer to this is quite straightforward: when a consumer cannot understand the meaning of the word.

Based on the definitions in English dictionaries, a word ‘doughnut’ means a small fried cake of sweetened dough. Thus, according to the aforementioned principle, it seems that this word could not be registered as a trademark for goods such as bread or bakery foodstuffs, especially doughnuts all classified under class 30 in Nice Classification. Yet, is this assumption plausible?

In 2006 a Spanish company BIMBO S.A. filed a Community trademark application for a word ‘bimbo doughnuts’. Although the Office of Harmonization for the Internal Market (OHIM) registered this trademark, another Spanish company Panrico SL filed an opposition against this registration. Panrico argued that there was a likelihood of confusion between ‘BIMBO DOUGHNUTS’ and other earlier registered national or international word or figurative trademarks, especially between a Spanish national word trademark ‘DOGHNUTS’.  The complaint was upheld.

BIMBO S.A  filed an appeal against this decision which, nonetheless, was rejected by OHIM arguing that ‘doughnut’ is an English word referring to a small round friable cake made of dough. Such word does not exist in Spanish lexical inventory, therefore, lexical items ‘dónut’ and ‘rosquilla’ are used as equivalents. According to the Boards of Appeal, most of the average Spanish consumers do not have good enough English to know what the word ‘doughnut’ means. Therefore, the word ‘doughnut’ would be meaningless to the average Spanish consumer and would not give any detailed accounts to the goods or their quality features indicated in the application. Thereby, it could be implied that the word ‘doughnut’ does not bear any additional and concrete meaning in terms of these goods. OHIM further stated that the majority of Spanish consumers would regard both trademarks (the earlier and the later one) either as artificially created lexical items or as foreign words.

As a result, the Boards of Appeal declared that the trademarks would be similar to each other, since the earlier trademark ‘DOGHNUTS’ was almost identically incorporated into the later trademark ‘BIMBO DOUGHNUTS’. OHIM concluded that there was a medium degree of visual and phonetic similarity between the two trademarks, but that the semantic comparison of these marks was not possible due to the obscure meaning of the word ‘doughnut’. Likewise, OHIM stated that both trademarks covered the same goods and that the earlier trademark had an average distinctive feature. Therefore, due to the visual and phonetic similarities between the trademarks and the fact that both of them cover the same goods, the likelihood of consumer confusion may arise.

BIMBO S.A did not agree with this decision and filed an appeal against it to the General Court. The company also applied for the trademark ‘BIMBO DOUGHNUTS’ registration. From the applicant’s point of view, the word ‘doghnut’ does not have any distinctive features, thus the similarities between the words ‘doghnut’ and ‘doughnuts’ that are in the trademarks cannot have any influence on the similarities between the trademarks themselves. The applicant considers ‘BIMBO’ rather than ‘DOUGHNUTS’ as the main element of the mark. The General Court dismissed this appeal and confirmed the Board’s decision. Despite this, the decision is currently being appealed to the Court of Justice.

The fact that a meaningful word could be registered as a trademark to represent goods and services that it describes, could be evidenced by the practice of the State Patent Bureau of the Republic of Lithuania.  The bureau raises the same requirements, meaning that it does not allow for the word to convey a clear and unambiguous meaning for the residents of the country.

The state Patent Bureau dismissed an application for ‘DOG CHOW’ trademark registration which marks such goods as foodstuffs for dogs classified under class 31.  The Bureau based its decision on the grounds that ‘DOG CHOW’ trademark consists of a combination of words which refers to foodstuffs for dogs and indicates the type and purpose of goods. The trademark has a clear word meaning and refers to goods of the class the application has been filed for.  This trademark can be entered into the market when indicating the crucial characteristics of goods. It also mustn’t distinguish the goods of different companies.

The proprietor of the trademark did not agree with this decision and applied for a repeated expertise. Together with the request, excerpts from various dictionaries were provided indicating that ‘DOG CHOW’ is a word trademark consisting of a combination of words ‘dog’ and ‘chow’. Although the definition of ‘dog’ could be found in all the English-Lithuanian dictionaries, it is not the case with ‘chow’, which is not often used in a standard variety of English and is considered to be a slang word. This is how the word is described in an electronic dictionary Alkonas and in dictionaries where the definitions of English words are provided. Oxford English Dictionary, a definitive record of English language, introduces with other definitions of the word ‘chow’, such as ‘a person of Chinese nationality’ (an offensive connotation) or ‘a dog of a sturdy Chinese breed with a broad muzzle, a tail curled over the back, a bluish-black tongue, and typically a dense thick coat, also known as chow-chow’.

When overviewing the activity of the European Community courts, one may conclude that it must be ascertained whether a word element written in a particular language will be understood by the society in the territory of interest. The trademark will be considered understandable in the territories of which mother tongue vocabularies contain the word element of the trademark. Also, this understandability must be confirmed in territories of which mother tongue lexical inventories do not contain the word in question, unless the variety in which the word is written is widely known among the population of the territory. Also, according to the traditions in the court, the mark can be treated as having a distinctive feature if a consumer fails to immediately and precisely identify its class of goods or services.

The proprietor of the trademark disagreeing with this decision provided the bureau with the survey results which indicated that Lithuanians struggled in finding the correct and exact meaning of the word ‘chow’.

In the survey participants were asked if they are able to decide on the meaning of a lexical unit ‘dog chow’. Significantly, around 80.5 % of subjects answered that they could not and only 19.5 % of them gave positive responses. Only 2.5 % of the participants indicated that the word referred to the foodstuffs of goods. Although the group which responded positively knew what ‘dog’ meant, they interpreted the whole expression as ‘the dog of dogs’ ,‘something related with dogs’, ‘dog show’, ‘the dog of a dog’, ‘dog breed’, etc. Thus, only 29 subjects out of 1004 participants defined the combination of ‘dog chow’ as ‘the food for dogs’.

Thus, it is clear that the collocation ‘dog chow’ would provide no explicit and precise information on registered goods and would not help to immediately identify those goods. Thereby, the trademark ‘DOG CHOW’ should be regarded as the one that has a distinctive feature.

After the full analysis of evidence and repeated expertise, the State Patent Bureau changed its mind and decided to grant the protection for the international ‘DOG CHOW’ trademark registration in Lithuanian territory.

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