Advocate general recommends that ECJ set aside olive oil decision

European Union
Advocate General Mazák has delivered his opinion in Aceites del Sur-Coosur SA v Koipe Corporación SL (Case C-498/07 P, February 3 2009).
Aceites del Sur-Coosur SA, formerly Aceites del Sur SA, applied for the registration of the figurative mark LA ESPAÑOLA (which represents the image of a person seated in an olive grove) as a Community trademark for olive oil. Koipe Corporación SL opposed the application based on its earlier figurative mark CARBONELL (which also represents a person seated in an olive grove). Koipe maintained that there existed a likelihood of confusion among consumers on account of the identity of the goods (olive oil) and the visual similarity of the marks.  
The Opposition Division of the Office for Harmonization in the Internal Market (OHIM) and the Fourth Board of Appeal of OHIM rejected the opposition. However, the Court of First Instance (CFI) upheld it, considering that the marks were sufficiently similar to sustain an opposition (for further details please see “Olive oils figurative trademarks are similar, says CFI”). Coosur appealed to the European Court of Justice (ECJ).
The appeal was based on numerous grounds, most of which were assessed as being unsustainable. However, the advocate general recommended to the ECJ that it allow the appeal and set aside the decision of the CFI.
Among other things, the advocate general stated as follows:
"[Coosur] considers that the judgment under appeal examined the marks at issue not on the basis of the criterion of a ‘global assessment’ or ‘overall impression’, but took a separate, successive and analytical approach to the constituent elements of the compound marks, thereby infringing Article 8(1)(b) [of the Community Trademark Regulation (40/94)] and the case law interpreting it. Thus, in giving the figurative elements a decisive weight and denying any importance to the word elements of the mark, the [CFI] distorted the facts and evidence in the file.

[…] According to [Coosur] and OHIM, the [CFI] did not correctly assess the relevant public in that it established the profile of the average Spanish consumer of olive oil as a consumer who is closer to the model of the average consumer used under German case law, namely ‘a careless and rash consumer’, rather than the model European consumer defined by Community case law who is ‘reasonably well informed and reasonably observant and circumspect’. In addition, the judgment under appeal assumes a lower level of attention by consumers with regard to marks of olive oil, instead of assuming the level of attention normally paid to olive oil by the average Spanish consumer who is reasonably well informed and reasonably observant and circumspect. […]

While the [CFI] would appear at first glance to have carried out a global assessment of the risk of confusion between the marks at issue, I consider that the [CFI] only effectively took into account in that assessment the brand name ‘La Española’. However, apart from recognizing [...] that the word element is different, the judgment under appeal contains no express assessment of the distinctiveness or otherwise of the brand name ‘Carbonell’. I therefore consider that the [CFI] failed adequately to compare the actual content of the word elements of the brand names ‘Carbonell’ and ‘La Española’.

It follows [...] that in assessing the word elements of the marks at issue, the [CFI] bypassed in that assessment the actual content of the word element of the brand name ‘Carbonell’ and carried out a one-sided and therefore legally incorrect comparison of the two brand names at issue. I consider that this omission led to a distortion of the facts and evidence in the file.

At the same time, the above omission on the part of the [CFI] led, in my view, to an error of law as regards the interpretation and application of Article 8(1)(b) […].

I would add in that regard that even if the [CFI] considered the contents of the word elements of the brand names ‘Carbonell’ and ‘La Española’ to be non-dominant and/or of lower importance, it was nonetheless obliged, unless it took the view that those elements were negligible, to compare the actual content of the word elements of the brand names. On that point, in Medion, for instance, the court found that a likelihood of confusion arose from a non-dominant component.

Moreover, the [CFI] did not provide any express reason as to why, in the context of the visual comparison of the marks at issue, it did not compare the actual content of the word elements of the brand names directly (that is to say, the brand names of the respective marks CARBONELL and LA ESPAÑOLA).

In addition, I also agree with [Coosur] and OHIM that - in spite of having cited [...] the correct case law concerning the standard of ‘a reasonably well-informed and reasonably observant and circumspect’ average consumer to be applied in the context of a global appreciation - the [CFI] in fact applied a standard which more closely resembles one of an excessively negligent consumer
The decision of the ECJ is keenly awaited.
Jeremy Phillips, IP consultant to Olswang, London

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