Carbonell Wins Battle Over Woman With Olive Branch
A discussion of the Aceites/Koipe/OHIM judgment of the
European Court of Justice dated 3 September 2009
(C-498/07P)
In Spain a battle has been raging for years between the olive
oil brands CARBONELL and LA ESPAÑOLA about the use of the image of
a woman sitting in an olive grove. When the producer of LA ESPAÑOLA
(Aceites del Sur) applied for a European device mark with the OHIM,
the producer of CARBONELL (Koipe) therefore reacted by initiating
opposition proceedings based on Article 8 (1) under b of the
Community Trademarks Regulation (CTMR). Koipe itself was somewhat
slower in filing a European application, but could also base the
opposition on earlier national figurative marks. The battle was
between the following marks, with figurative as well as word
elements:
In two instances the OHIM concluded that there was no likelihood of
confusion and denied the opposition, but the Court of First
Instance (CFI) decided in Koipe´s favor. Next, Aceites del Sur
brought the matter before the European Court of Justice (ECJ),
providing two arguments.
Earlier Trademark?
Koipe based the opposition on various trademarks, namely Spanish
and other national trademarks, but also on the above-mentioned
Community Trademark, the application date of which lay
after the application by Aceites del Sur. When Aceites del
Sur protested against this, the CFI considered this to be
irrelevant, because all trademarks that were brought forward were
identical (with regard to image). Next, Aceites del Sur argued
before the ECJ that the CFI thus had also accepted a later
Community Trademark as a basis for the opposition, which is in
conflict with Article 8 of the CTMR, which explicitly indicates
that an opposition may only be filed on the basis of an earlier
trademark. The ECJ did not follow this line of reasoning. The CFI
rightly determined that Koipe had sufficient ground for filing the
notice of opposition, consisting of the (particularly Spanish)
national trademarks. When testing the likelihood of confusion, the
CFI consistently departed from the situation in Spain, and not in
the entire Community. All in all, it seems that an inaccuracy of
the CFI is shielded; the CFI should have determined, of course,
that the application for the Community Trademark could not serve as
a basis for the opposition.
Global Assessment of the Likelihood of Confusion
A more fundamental discussion is how the comparison
between two combined word and/or figurative marks should be made.
It is established case law that the likelihood of confusion has to
be assessed globally, and that with respect to the similarity
between the mark and the possible infringing sign this assessment
"must be based on the overall impression given by the
marks, bearing in mind, in particular, their distinctive and
dominant components" (ECJ, inter alia in
Puma/Sabel). With this last sentence an ambiguous instruction
is given, because on the one hand the Court must depart from the
overall impression, but on the other hand it must attach weight to
dominant components. This regularly leads to conflicting
assessments, just like in this matter.
The OHIM is of the view that the image of a person sitting in an
olive grove has weak distinctive character for the goods olive oil,
so that the word elements become of decisive importance. There is,
of course, no similarity between LA ESPAÑOLA and CARBONELL, so that
according to the OHIM there can be no likelihood of confusion.
The CFI does not see why this image would have limited
distinctive character, particularly now that the OHIM does not
mention any proof of possible use by third parties. As regards
size, the image element in fact occupies an important place. In
addition, in Spain LA ESPAÑOLA will mostly be understood as a
designation of origin, so that this word component has very little
distinctive character. The CFI considered that the elements common
to the marks at issue, seen as a whole, produce an overall
impression of great similarity, since the LA ESPAÑOLA mark
"reproduces very precisely the essence of the visual
message and the visual impression given by the CARBONELL mark: the
woman dressed in traditional clothes, seated in a certain manner,
close to an olive branch with an olive grove in the background, the
overall image consisting of an almost identical arrangement of
spaces, colours, places for brand names and style of
lettering".
In the appeal proceedings Aceites del Sur argued that the CFI
had wrongly only departed from the figurative elements and
therefore did not take the standard of the overall impression into
account. The ECJ carefully checked the CFI's assessment and
approved it. It is true that the CFI deemed the image dominant, but
it did not fail to take the word element into account as well. The
"global assessment" rule has thus been applied
correctly.
Coexistence
A separate argument brought forward by Aceitas del Sur is that the
CFI should have attached weight to the circumstance that both
trademarks have coexisted in Spain already for years. That element
may play a role, as the ECJ has admitted, but then the coexistence
should be peaceful and that is clearly not the case here; after
all, for years already the two parties have been litigating about
this issue, also on a national level.
Therefore, in principle, CARBONELL acquires the monopoly on its
(specific) image of a woman with an olive branch. For trademark
lawyers this is a new example (after, for instance, the Limoncello
judgment) of the subtlety of the assessment when combined word
and/or figurative marks are compared.