Olive oils figurative trademarks are similar, says CFI

In Koipe Corporación SL v Office for Harmonization in the Internal Market (OHIM) (Case T-363/04), the Court of First Instance (CFI) has overturned a decision of the Board of Appeal of OHIM rejecting the opposition to the registration of the figurative mark LA ESPANOLA for goods in Classes 29 and 30 of the Nice Classification (olive oil).

Aceites del Sur SA filed an application for the registration of the mark LA ESPANOLA as a Community trademark. Aceites Carbonell (now Koipe Corporación SL) opposed the registration of the mark applied for on the grounds that there was a likelihood of confusion with the earlier figurative mark CARBONELL. The Opposition Division of OHIM rejected the opposition. The Board of Appeal of OHIM dismissed Koipe's appeal on the grounds that:

• the figurative elements of the marks had only a weak distinctive character with regard to olive oil; and
  
  
• the word elements ('La Espanola' and 'Carbonell'), which are the most important elements of the two marks, are different.

However, the CFI disagreed.

The CFI pointed out that the goods covered by the earlier mark were identical to those covered by the mark applied for with regard to olive oil, and highly similar with regard to edible fats.

In the contested decision, the board merely noted that the figurative elements of the marks consisted essentially of a person seated in an olive grove, which was allegedly a commonly used image in the olive oil industry. In contrast, the CFI pointed out that the applicant claimed exclusivity over a specific representation (ie, not the abstract representation of an olive grove or of a woman). The CFI referred to the general principle whereby the mere fact that each of the components considered separately is devoid of distinctive character does not mean that their combination cannot be distinctive. Moreover, the CFI stated that:

"where the word element of a complex mark holds an equivalent position in relation to the figurative element, the latter could not be regarded, from a visual point of view, as subsidiary in relation to the other component of the sign."

This principle applies a fortiori in the present case, where the figurative element holds a more dominant position.

The CFI also refers to the principle that the likelihood of confusion lies in the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings. According to EU case law, two marks are similar when they are at least partially identical with regard to one or more relevant aspects. The CFI enumerated aspects which are similar in both marks and pointed out that there was also a conceptual link between the marks with regard to the nature and origin of the goods.

Moreover, the CFI stated that the overall image of the marks consisted of "an almost identical arrangement of spaces, colours, places for brand names and style of lettering". According to the CFI, the likelihood of confusion is not diminished by the existence of the different word elements. In addition, the word element of the mark applied for has a weak distinctive character, as it refers to the geographical origin of the goods.

As to the perception of the relevant public, the CFI found that olive oil is a common product in Spain and that the level of attention of the average consumer with regard to the external appearance of the goods is likely to be low.

Finally, the CFI stated that consumers may perceive the mark applied for as a sub-brand linked to the CARBONELL mark. Therefore, there was a likelihood of confusion under Article 8(1)(b) of the Community Trademark Regulation (40/94/EEC). The opposition was thus upheld.

Birgit Reinisch and Stephan N Schneller, Maiwald Patentanwalts GmbH, Munich