In Case T-273/10, in a continuing legal fight between Spanish and Italian olive oils, the General Court had to review the decision of the OHIM which found there was no likelihood of confusion between the following trademarks:

                                                                           OLIVE LINE

Olivella Srl. (Italy) applied for CTM             Olive Line International, SL earlier Spanish &CTM

As regards the comparison of the goods and services, the OHIM and GC considered that in respect of the goods for which the CTM registration had been applied, that is “Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices” were identical to the goods protected by the earlier marks or were similar to them in Class 3: ‘‘Soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, cosmetic creams, all olive oil-based’ in Class 3:

As regards the comparison of the marks, the BoA took the view, first, when comparing the trade mark applied for with the earlier Spanish word mark, that their only common elementthe word, ‘olive’, described an important characteristic of the goods concerned, namely their ingredients. The second element of that earlier mark, ‘line’, would be perceived by the relevant consumers as describing a line of products. Therefore the distinctive character of this mark lies only in the combination of the two words it comprises, or indeed, it has no distinctive character. The descriptive and, therefore, non-distinctive, character of the earlier mark and its weak degree of similarity to the trade mark applied for were sufficient, according to the Board of Appeal, to exclude any likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (CTMR) even for goods and services which have been held to be identical or similar.

The BoA took the view, second, as regards the comparison of the trade mark applied for with the earlier figurative marks, that the same considerations applied by analogy, as the differences were further accentuated by the particular graphic features of those marks. As regards the earlier CTM, the OHIM stated that the word ‘olive’ would be understood throughout the relevant territory, since it is an English word and because identical or similar words also exist in other languages of the European Union. Moreover, it was easier to understand because of the presence of the image of a stylised olive leaf and because it is well known that olive oil is a product which is good for health and is contained in beauty products. Further, the word ‘line’ is also easily understood throughout the Union, since it is a part of basic English vocabulary. Finally, if some of the relevant consumers did not notice the reference to olives by the earlier figurative marks, they would read it as cllive line or celive line, which would rule out any risk of confusion

The General Court cancelled the contested decision, holding that given the similarity between the conflicting marks and between the goods and servicesthe relevant public, which is reasonably attentive and circumspect, in the presence of those goods and services designated by the trade mark applied for, might either not notice the difference constituted by the absence of the term ‘line’ or the particular graphic features of that mark compared with the earlier word mark, or think that those goods and services came from the same firm which was marketing them under a similar trade mark to that earlier trade mark, in order to draw attention to different lines of goods or different types of services also based on olives or olive oil, or take the view that those goods and services at least came from economically linked undertakings.

Contrary to OHIM’s contention, the weak distinctive character of the earlier word mark cannot play a decisive role in the overall assessment of the likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among many involved in such assessment. Even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered, as in the present case. Conversely, to give priority to the weak distinctive character of a trade mark in the assessment of the likelihood of confusion would point to the conclusion that, where a mark has only weak distinctive character, there is a likelihood of confusion only where it is reproduced fully by the trade mark of which registration is sought, whatever the degree of similarity between the marks at issue. Such a result would not be consistent with the very nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 8(1)(b) of CTMR.