'Donuts' not generic in Spain, rules Court of First Instance

In House of Donuts International v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld the refusal of two Community trademark applications for the word and device marks HOUSE OF DONUTS and HOUSE OF DONUTS - THE FINEST AMERICAN PASTRIES by the OHIM Board of Appeal. The board had rejected the applications on the basis of likelihood of confusion with the prior Spanish national word/device registrations for DONUTS owned by Panrico SA.

It was not disputed that the range of goods and services under House of Donuts International's (HDI) and Panrico's respective marks were identical. The CFI therefore proceeded to assess the likelihood of confusion in the minds of the average Spanish consumer between the two proposed registrations and the existing Spanish marks.

HDI argued that the word 'donut' had now become generic in Spain. It submitted that the word:

• was used widely on Spanish internet sites;
  
  
• was featured in two bilingual dictionaries available in Spain; and
  
  
• had been entered in the Spanish trading name register in the relevant category of goods.

HDI also contended that whereas Panrico's marks were simply word or device marks, its two Community trademark applications were complex as they contained a figurative element, namely two umbrellas and the words HOUSE OF DONUTS and the relevant Arabic translation, or in the case of the second mark, the words HOUSE OF DONUTS THE FINEST AMERICAN PASTRIES. HDI believed that these features rendered its marks unique.

The CFI rejected HDI's evidence as being inadmissible, irrelevant or of no probative value. The dictionary evidence was inadmissible as it was inapt to show the degree of familiarity of a user with a word of foreign origin and, in any event, had not been brought as evidence before the board at the earlier stage of proceedings. The internet evidence of use of 'donuts' in Spain was inconclusive and the entry on the trading name register used 'donuts' together with an explanation in Spanish. The CFI found that the word 'donuts' was not widely understood or used in Spain and thus the word could not be held to be generic.

The CFI found that the dominant and central element of HDI's marks was the word 'donuts' when considered on the basis of overall impression and from an aural or conceptual perspective. The CFI went on to hold that this was practically identical to the dominant element in the two existing Spanish marks; the only real difference being peripheral matters such as the positioning of the words and the lettering used. Overall, these differences did not reduce the likelihood of confusion for the average Spanish consumer who would be likely to remember only the word 'donuts'.

Although the lettering font of the central 'donuts' element of each of the marks is similar and this element is undoubtedly the key feature, it does seem surprising that more weight was not attributable to the various "peripheral" elements of HDI's marks, such as the fairly distinctive umbrella device. Further it seems odd in light of the ubiquitous nature of US television programmes and popular culture that many Spanish people of working age or under, would not have at least run across the word 'donuts'. Had such evidence been submitted at an earlier stage, the decision may have been very different.

Alistair Payne, Matheson Ormsby Prentice, Dublin