The matter at hand

After unsuccessful opposition proceedings (upheld by the Board of Appeal), the Spanish company Panrico initiated cancellation proceedings against the subsequent registration covering a figurative mark containing the word element ‘Krispy Kreme Doughnuts’, for (inter alia) several pastry products in class 30 and restaurant services in class 42. The invalidity proceedings were based on several earlier marks containing the word elements DOGHNUTS and DONUT, all of which marks had been registered for pastry products in class 30.

The rejection of the application for invalidity by the Cancellation Division and the following dismissal of the appeal by the Board of Appeal led to the case being brought before the General Court. According to the latter, the Board of Appeal was correct in ruling that the dominant position of the element ‘Krispy Kreme’ resulted in a visual dissimilarity with the earlier marks. The Board of Appeal’s inability to compare the marks on a conceptual level, due to the words ‘doughnuts’, ‘donut’ and ‘donuts’ not being part of the common Spanish vocabulary, as well as its consideration that the services of class 42 are not similar to the goods of class 30, were also confirmed by the General Court.

Given that only a remote phonetic similarity existed between the marks, the General Court established that there was no likelihood of confusion, despite the acquired enhanced distinctiveness and reputation of Panrico’s earlier marks and the similarity of the goods involved.

The judgment of the ECJ

The ECJ reiterates its limited scrutiny to deal with (newly) brought forth factual matters. The ECJ emphasizes that the General Court has exclusive jurisdiction to find and appraise relevant facts. The appraisal of those facts do not, save where they have been distorted, constitute a point of law which is subject, as such, to review by the ECJ. Consequently, the ECJ considers the assessment of the similarities between the marks, the degree of similarity of the goods and services and the absence of a likelihood of confusion to be of factual nature.  The ECJ furthermore states that Panrico’s newly brought forth argument, in which it asserts that the Board of Appeal should have accepted an enhanced distinctiveness of the element ‘DOUGHNUTS’, would result in a factual assessment and is thus inadmissible.

On a matter of law, the ECJ holds that the restaurant services in class 42 are not only characterized by the kind of product being offered in the restaurant, but also by the conditions under which the restaurant services themselves are being offered. Therefore, if the goods offered by the restaurant are identical to those covered by the earlier marks, it cannot be concluded that there necessarily is at least an average degree of similarity between the specific goods and the restaurant services in class 42.