Panrico SA, owner of the four earlier Spanish and Portuguese trade marks (as depicted below) was unsuccessful in its application to invalidate HDN Development Corporation’s registration of the ‘Krispy Kreme DOUGHNUTS logo (as depicted above) as a Community Trade Mark (“CTM”) in the EU.
The Board of Appeal (OHIM) (the “Board”) first considered the likelihood of confusion that may arise as a result of the contested Krispy Kreme logo. In this respect, the Board stated that the relevant public was made up of “average consumers deemed to be reasonably well informed and reasonably observant and circumspect”.
Although the marks concerned identical goods in Class 30 (confectionery, pastry, donuts), the Board found that the degree of similarity between the marks was very low. It pointed out that that there was no visual similarity. The word elements “Krispy” and “Kreme” of the contested mark stood out the most as compared to the word “DOUGHNUTS” given their size, style and positioning. Even though the Board concluded that there was slight phonetic similarity given the number of common consonants and vowels, it ruled that it was impossible to compare the marks conceptually. The Board held that the word elements’ donuts “,” donut “and” donut “do not belong to the usual vocabulary of the Spanish language, so that the relevant public in Spain would not associate them to a concrete concept. The same reasoning applies to other verbal elements ‘krispy “and” kreme’ of the contested mark.
Finally, the Board considered whether the contested Krispy Kreme logo took unfair advantage of the distinctiveness of the earlier marks. Given that the phonetic similarity was less important than the visual aspect, the Board held that there was significant differences overall. It is thus unlikely that the contested mark would have taken unfair advantage of the distinctive character or the repute of the earlier marks.
It is worth noting that Panrico SA has been involved in a series of trade mark oppositions, shutting down donut brands in Europe. Early last year, Panrico SA successfully invalidated Bimbo SA’s application to register “BIMBO DOUGHNUTS” as a CTM on grounds that there exists a likelihood of confusion between the marks. Perhaps New York Dominique Ansel’s Cronuts (cross between croissant and donut) can consider making use of this opportunity to enter the European market if it has not already done so.