Can you combine a third party’s existing trademark with another distinctive mark?

In BIMBO SA v OHIM, BIMBO SA applied to register BIMBO DOUGHNUTS as a Community trademark in respect of ‘pastry and bakery products, specifically doughnuts’. That application was opposed by Panrico SA on the basis of prior registrations, in particular the mark DOGHNUTS, which was registered in Spain in respect of ‘pastry products and preparations… round-shaped dough biscuits’.

The General Court upheld the opposition from the OHIM’s Board of Appeal. In its decision, the General Court referred to the leading, somewhat controversial case of Medion, which established that ‘where goods or services are identical, there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark that has normal distinctiveness and that, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein’.

The General Court considered that DOUGHNUTS had an independent distinctive role in BIMBO’s mark…

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