Court considers "element that public will remember" in assessing risk of confusion

European Union

In Olive Line International SL v Office for Harmonisation in the Internal Market (OHIM) (Case T-273/10, May 22 2012), the General Court has annulled, in part, a decision of the Fourth Board of Appeal of OHIM.

The only way of obtaining trademark protection for a descriptive word is to present it in a graphic form. If the graphic representation of the mark is sufficiently distinctive, OHIM will register it, but the question remains: how can the scope of protection of such a trademark be defined? In addition, the graphic representation of the mark may include a description of the product or a reference to a particular property of the product, and the issue is then to what extent such graphic element will enjoy protection against use of similar signs. 

In the present case, the applicant filed for the registration of the following mark: 

The word 'olive' is clearly recognisable in the mark, and the olive tree leaf reinforces this understanding. The dot between 'o' and 'live', as well as the rectangular label with a black background, serve to render the trademark distinctive to a certain extent. The trademark was accepted by the OHIM examiner and published for opposition.

The owner of an earlier figurative Community trademark (CTM) (No 5086657), depicted below, filed an opposition against the registration of the mark, claiming that the similarities between the two marks would create a likelihood of confusion.

The opponent also owned a Spanish trademark (No 2741533) identical to the CTM above, as well as the Spanish word mark OLIVE LINE (No 2525564). The earlier trademarks covered various products in Class 3 of the Nice Classification, while the opposed trademark covered goods in Class 3 and various services in Class 44, including “hygiene and beauty care for humans and animals”.

The Opposition Division of OHIM rejected the opposition in its entirety (B 1215047, October 31 2008). The Fourth Board of Appeal dismissed the appeal against this decision (R 4/2009-4, October 14 2010) on the basis that the trademarks mainly consisted of the word 'olive', which described an important characteristic of the goods concerned. In addition, the second word of the OLIVE LINE marks was considered to be descriptive, as consumers would perceive it as a reference to a product line.

The case was brought before the General Court, which reached a different conclusion: it held that the trademarks were similar and, consequently, there would be a likelihood of confusion should the opposed trademark be registered. The General Court argued that there may be a likelihood of confusion even where the earlier mark has a weak distinctive character (Paragraph 30). This also holds true if the word with the weak distinctive character - here, the word 'olive' - is the dominant element of all the marks at issue. Although, as a general rule, a descriptive element will not usually be considered as the dominant element in the overall impression conveyed by the mark (Paragraph 57), this does not prevent a descriptive or non-distinctive element, in certain circumstances (in the instant case, due to its position and size) from making an impression on, and being remembered by, consumers.

This approach is to be welcomed: instead of considering theoretically the degree of distinctiveness of specific elements and their similarity, the General Court examined whether an element - whether distinctive or not, and whether descriptive or not - may influence the recollection of the average consumer, who may be misled if the same element appears in a later mark. The court thus disagreed with the board's finding that, because the word ‘olive’ described an important characteristic of the goods and the image of a leaf reinforced that descriptive meaning, there was no likelihood of confusion; instead, the court took into consideration the element that the average consumer would remember.

The General Court concluded that the board's decision should be annulled insofar as it concerned:

  • all the goods in Class 3 for which olive oil is an essential ingredient; and
  • bleaching preparations and similar products which do not contain olive oil, as well as hygiene and beauty care for humans and animals.

This result is positive for trademark owners, but it raises the following problem: a mark which, due to its descriptive or non-distinctive character, should not be registered (eg, the word 'olive' for cosmetics containing olive oil), can not only be registered by adding the image of an olive tree, a dot between the first two letters and a black rectangle, but can also be protected against other trademarks which contain the word 'olive' and different graphic elements.

This opens up new possibilities for trademark applicants.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

Unlock unlimited access to all WTR content