Likelihood of confusion test for figurative marks clarified

European Union
In Aceites del Sur-Coosur SA v Koipe Corporación SL (Case C-498/07 P, September 3 2009), in a decision that will be welcomed by trademark owners, the European Court of Justice (ECJ) has held that there was a likelihood of confusion between the figurative trademarks LA ESPAÑOLA and CARBONELL.
Aceites del Sur SA filed an application for the registration of the figurative mark LA ESPAÑOLA (which included the image of a woman seated in an olive grove) as a Community trademark for olive oil (Application 338681). Koipe Corporación SL opposed the application on the grounds that there was a likelihood of confusion with its earlier figurative mark CARBONELL, which included a similar design and covered identical goods.

The Opposition Division of the Office for Harmonization in the Internal Market found that the trademarks were not similar and the Board of Appeal affirmed. However, on appeal, the Court of First Instance (CFI) disagreed, holding that there was a likelihood of confusion between the marks (for further details please see "Olive oils figurative trademarks are similar, says CFI"). Aceites appealed to the ECJ.
It appears that prior to the opposition proceedings before OHIM, the parties had already been involved in proceedings in Spain, in which Koipe had been unsuccessful.
In his opinion of February 3 2009, Advocate General Mazák concluded that the marks were not confusingly similar and recommended that the ECJ set aside the decision of the CFI. The advocate general based his opinion mainly on the distinctive and dominant elements of the LA ESPAÑOLA and CARBONELL marks, considering that the CFI had failed adequately to compare the word elements of the marks (for further details please see "Advocate general recommends that ECJ set aside olive oil decision"). However, the ECJ did not follow the opinion of the advocate general.
In contrast, the ECJ afforded overriding importance to the figurative elements of the marks, holding that the average consumer normally perceives a trademark as a whole and does not analyze its various details. The ECJ concluded that the CFI had been correct in finding that the figurative element of the marks had greater importance, which increased the likelihood of confusion between the marks.
In its appeal, Aceites argued that the CFI had failed to take into account the fact that the marks had coexisted on the Spanish market over a long period of time. However, the ECJ held that although the absence of a likelihood of confusion may be inferred from the coexistence of the marks on the market, this is true only if such coexistence is peaceful. In the present case, it was clear that the marks had not coexisted peacefully on the market. Therefore, such coexistence could not be taken into account in establishing whether there was a likelihood of confusion among consumers.
Although the ECJ did not specifically discuss whether the mark applied for constituted an imitation of the earlier mark, it appears evident that Aceites sought to imitate the well-known CARBONELL mark: the shape of the label, the position of the word element, the curved banner at the top of the label, the image of the woman and the decorative elements surrounding the image are similar in both marks. Arguably, Aceites altered certain elements slightly to avoid a finding of likelihood of confusion:
  • While the word element 'Carbonell' appears in simple white letters, the word element 'La Española' has more ornamental features;
  • A small yellow circle appears below the word element in the LA ESPAÑOLA mark, but is absent in the CARBONELL mark;
  • The woman in the earlier mark is shown from the right angle, while the woman in the mark applied for appears from the left angle;
  • The tree element appears on the left side of the image in the earlier mark, but on the right side in the mark applied for;
  • The woman in the earlier mark raises her arms, while the woman in the mark applied for holds a jug;
  • The CARBONELL mark is surrounded by flowers, while the LA ESPAÑOLA mark is surrounded by olives and leaves; and
  • The curved banner at the top of the CARBONELL mark is green and includes the words 'aceite de oliva', while that in the LA ESPAÑOLA mark is yellow and contains no word element.
Nevertheless, the ECJ concluded that the overall visual impression of the marks was similar. The appeal was thus dismissed.

The decision provides trademark owners with better protection against imitations - at least in cases where the overall impression of the marks is similar.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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