Everyone knows donuts: a sweet roll with a hole in the middle. Everyone? No, not everyone. In Spain 99.7% think of Panrico Donuts, a brand for, yes, donuts.
Strange? Well, it happens sometimes that a generic name in one country is a distinctive trademark in another country as the significance is not known in some countries. Think of the word ugg, a generic name in Australia referring to sheepskin shoes but in the rest of the world UGG is a distinctive footwear brand. Plakkies is the name of flipflops in South Africa, but a trademark in Holland, while Flip Flops is a trademark in Germany! When assessing the distinctive character of a trademark this must be done from the perspective of the relevant public, and especially its knowledge of the words.
In Spain Panrico, the owner of the well-known trademark Donuts, has a strong trademark. So, this company could successfully object against the figurative trademark Spanish Doughnuts. The EUIPO found it likely that the trademark Spanish Doughnuts could take unfair advantage of the reputation of the earlier mark Donuts. At first a strange story, but with the above perspective, quite logical!
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