JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
JUDGMENT OF THE COURT (First Chamber) 
3 September 2009 * 
In Case C-498/07 P, 
APPEAL under Article 56 of the Statute of the Court of Justice, brought on 
12 November 2007, 
Aceites del Sur-Coosur SA, formerly Aceites del Sur SA, established in Vilches
(Spain), represented by J.-M. Otero Lastres and R. Jimenez Diaz, abogados, 
appellant, 
the other parties to the proceedings being: 
Koipe Corporación SL, established in San Sebastián (Spain), represented by 
M. Fernández de Béthencourt, abogado, 
applicant at first instance, 
* Language of the case: Spanish. 
I - 7388 
ACEITES DEL SUR-COOSUR v KOIPE 
Office for Harmonization in the Internal Market (Trade Marks and Designs)
(OHIM), represented by J. García Murillo, acting as Agent, 
defendant at first instance, 
THE COURT (First Chamber), 
composed of P. Jann, President of the Chamber, M. Ile šič, A. Tizzano (Rapporteur), 
A. Borg Barthet and J.-J. Kasel, Judges, 
Advocate General: J. Mazák,  
Registrar: M. Ferreira, Principal Administrator,  
having regard to the written procedure and further to the hearing on 14 October 2008,  
after hearing the Opinion of the Advocate General at the sitting on 3 February 2009, 
I - 7389 
JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
gives the following 
Judgment 
1  By its appeal, Aceites del Sur-Coosur SA, formerly Aceites del Sur SA ( ‘Aceites del Sur ’),
asks the Court of Justice to set aside the judgment of the Court of First Instance of the
European Communities of 12 September 2007 in Case T-363/04 Koipe v OHIM — 
Aceites del Sur (La Española) [2007] ECR II-3355) ( ‘the judgment under appeal ’), in
which the Court of First Instance allowed the action brought against the decision of the
Fourth Board of Appeal of the Office for Harmonization in the Internal Market (Trade
Marks and Designs) (OHIM) of 11 May 2004 (Case R 1109/2000-4) ( ‘the decision at 
issue ’), relating to opposition proceedings between Koipe Corporación SL ( ‘Koipe ’) and 
Aceites del Sur. 
Legal background 
2  Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the
Community trade mark (OJ 1994 L 11, p. 1) provides: 
‘Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for
shall not be registered: 
… 
I - 7390 
3 ACEITES DEL SUR-COOSUR v KOIPE 
(b) if because of its identity with or similarity to the earlier trade mark and the identity
or similarity of the goods or services covered by the trade marks there exists a
likelihood of confusion on the part of the public in the territory in which the earlier
trade mark is protected; the likelihood of confusion includes the likelihood of
association with the earlier trade mark. ’ 
Article 8(2) of that regulation provides: 
‘For the purposes of paragraph 1, “earlier trade marks ” means: 
(a) trade marks of the following kinds with a date of application for registration which
is earlier than the date of application for registration of the Community trade mark,
taking account, where appropriate, of the priorities claimed in respect of those trade
marks: 
(i) Community trade marks; 
(ii) trade marks registered in a Member State, or, in the case of Belgium, the
Netherlands or Luxembourg, at the Benelux Trade Mark Office; 
(iii) trade marks registered under international arrangements which have effect in a
Member State; 
I - 7391 
4 JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
…’.  
Background 
On 23 April 1996, Aceites del Sur, a Spanish company producing vegetable oils, filed an
application for a Community trade mark at OHIM pursuant to Regulation No 40/94
seeking registration, in respect of certain types of goods, including ‘edible oils and fats ’, 
of the figurative mark La Española depicted below: 
5  On 23 November 1998, the trade mark application was published in Community Trade 
Marks Bulletin No 89/98. 
6  On 23 February 1999, Aceites Carbonell, now Koipe, filed a notice of opposition to the
registration of that mark invoking the likelihood of confusion, within the meaning in 
I - 7392 
ACEITES DEL SUR-COOSUR v KOIPE 
particular of Article 8(1)(b), between the mark for which registration was sought and
Koipe ’s earlier figurative mark Carbonell ( ‘the Carbonell mark’) depicted below: 
7  As evidence of the existence of the Carbonell mark, Koipe relied on six registrations of
that mark in Spain, Community registration ‘Carbonell ’ No 338 681 ( ‘the Community 
registration ’), two international registrations and national registrations in Ireland,
Denmark, Sweden and the United Kingdom. 
8  The Opposition Division of OHIM, however, held that Koipe had successfully
established the existence of only three Spanish registrations and the Community
registration in respect of ‘olive oil ’. 
9  The Opposition Division of OHIM rejected Koipe ’s opposition in Decision 
No 2084/2000 of 21 September 2000. It held that the signs at issue produced a
different overall visual impression, that from a phonetic point of view they had no
similar elements, and that the conceptual link relating to the agricultural nature and
origin of the goods was weak, which excluded any likelihood of confusion between the
marks at issue. 
I - 7393 
JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
10  On 19 January 2001 Koipe filed an appeal before OHIM against the Opposition
Division ’s decision dismissing the opposition. On 11 May 2004, the Fourth Board of
Appeal of OHIM dismissed that appeal by adopting the decision at issue, which
confirmed in essence that the visual impression produced by the signs at issue was
different overall. 
11  First of all, according to the decision at issue, the figurative elements, consisting
essentially of the image of a person seated in an olive grove, had only a weak distinctive
character with respect to olive oil, the effect of which was to confer the utmost
importance to the word elements ‘La Española ‘and ‘Carbonell ’. As regards, next, the
comparison of the signs from a phonetic and conceptual point of view, the Fourth Board
of Appeal held that Koipe had not denied the complete absence of similarity between
the word elements or the weakness of the conceptual link between the signs at issue.
Finally, whilst acknowledging that the Opposition Division should have given a ruling
on the reputation of the earlier marks, it took the view that that assessment, together
with the examination of the documents produced before the Board of Appeal to
establish that reputation, were not strictly necessary, since one of the pre-conditions for
determining a likelihood of confusion with a mark which has a reputation or is well -
known, that is the existence of a similarity between the signs, was not in any event
satisfied. 
The proceedings before the Court of First Instance and the judgment under
appeal 
12  On 31 August 2004, Koipe brought an action before the Court of First Instance for the
annulment of the decision at issue. 
13  Koipe put forward two grounds for annulment, alleging, first, infringement of 
Article 8(1)(b) of Regulation No 40/94 and, secondly, infringement of the obligation for
OHIM to examine the evidence of the reputation of the earlier mark. 
I - 7394 
ACEITES DEL SUR-COOSUR v KOIPE 
14  Before ruling on the substance of the case, the Court of First Instance made the
preliminary observation at paragraph 47 of the judgment under appeal that the parties
were in dispute as to the registrations which were to be taken into consideration in
order to determine whether the right of opposition claimed by Koipe existed or not.
That dispute concerned in particular the fact that, in the view of OHIM and Aceites del
Sur, since the date on which the Community registration was filed was later than the
date on which the mark for which registration was sought was filed, the Board of Appeal
should not have taken that registration into consideration. 
15  The Court of First Instance considered, however, that that question was irrelevant as
regards the outcome of the proceedings and ruled as follows at paragraph 48 of the
judgment under appeal: 
‘… The decision [at issue] is based essentially on the lack of similarity between the
figurative element of the Carbonell mark and that of the mark applied for. The 
figurative element of the Carbonell mark is identical in all the registrations relied on by
[Koipe], both in those taken account of by the Board of Appeal and in those which it
excluded. ’ 
16  Following that preliminary consideration, the Court of First Instance examined Koipe ’s 
first plea, in which it claimed that in the decision at issue OHIM failed to take account
either of the fact that, at first sight, the marks at issue were similar overall, a similarity
that might give rise to confusion on the market, or of the fact that the goods which were
the subject of the application for registration, in this case olive oil, were identical to the
goods designated by the earlier mark. 
17  In that regard, the Court of First Instance stated, at paragraphs 75 to 78 of the judgment
under appeal, that in the decision at issue the Board of Appeal merely noted, in order to
substantiate its findings relating to the weak distinctive character of the figurative
elements of the marks at issue, that the representation at issue, consisting essentially of 
I - 7395 
JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
a person seated in an olive grove, was not unusual in the area of olive oil marks.
However, in the view of the Court of First Instance, the reasons why the Board of Appeal
made that finding were not explained and the latter failed to mention any mark, other
than those in dispute, containing a figurative element similar to the one used by those
marks. 
18  The Court of First Instance therefore held, at paragraph 87 of the judgment under
appeal, that the Board of Appeal was wrong to conclude that the figurative elements of
the marks at issue had a weak distinctive character. 
19  At paragraphs 88 and 89 of the judgment under appeal, the Court of First Instance held
that the Board of Appeal was incorrect to hold that the comparison of the word element
of the marks at issue was of overriding importance in that case in the light of the weak
distinctive character of the figurative elements of those marks. 
20  At paragraph 91 of the judgment under appeal, the Court of First Instance held that the
figurative element holds a more important position, in terms of surface, than the word
element. 
21  In that regard, at paragraphs 92 and 93 of the judgment under appeal, the Court of First
Instance observed in particular that, as OHIM itself had maintained in other opposition
proceedings, ‘the word element “La Española ” has only a very weak distinctive 
character. That word is commonly used in Spain and is perceived as being descriptive of
the geographical origin of goods ’. 
I - 7396 
ACEITES DEL SUR-COOSUR v KOIPE 
22  With regard to the similarity of the marks and the likelihood of confusion, at paragraph
103 of the judgment under appeal the Court of First Instance held that: 
‘The Court considers that the elements common to the two marks at issue, seen as a 
whole, produce an overall visual impression of great similarity, since the La Española
mark reproduces very precisely the essence of the 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. ’ 
23  At paragraphs 104 and 105 of the judgment under appeal, the Court of First Instance
held that that overall similar impression inescapably gave rise on the part of the
consumer to a likelihood of confusion between the marks at issue and that that 
likelihood of confusion was not diminished by the existence of the different word
element since the word element of the mark applied for had a very weak distinctive
character, as it referred to the geographical origin of the goods. 
24  Finally, after noting at paragraph 107 of the judgment under appeal the Community
case-law that defines the profile of the average consumer as being one who is reasonably
well-informed and reasonably observant and circumspect, but whose level of attention
is likely to vary according to the category of goods or services in question, the Court of
First Instance held at paragraphs 108 and 109 of that judgment that olive oil is a 
consumer product which is very common in Spain, and that in the particular
circumstances in which that product is sold the figurative element of the marks at issue
acquires greater importance, which increases the likelihood of confusion between the
two marks at issue. 
25  Consequently, at paragraph 112 of the judgment under appeal, the Court of First
Instance ruled that the Board of Appeal was wrong to conclude that any likelihood of
confusion between the marks at issue was excluded. According to the Court of First
Instance, it followed from all of the findings it had made that there was a genuine
likelihood of confusion between those marks. 
I - 7397 
JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
26  The Court of First Instance therefore accepted the first plea in law, alleging
infringement of Article 8(1)(b) of Regulation No 40/94 and, considering that there
was no need to examine the second plea in law put forward by Koipe in support of its
action, it upheld that action, altered the decision at issue and held that the opposition
brought by that company was well founded. 
Forms of order sought 
27  By its appeal, the appellant claims that the Court should: 
—  set aside the judgment under appeal in its entirety and, in consequence, 
—  give final judgment if the state of the proceedings so permits, or 
—  refer the case back to the Court of First Instance ‘for judgment in accordance with
the binding criteria established by the Court of Justice ’, and 
—  order Koipe and OHIM to pay the costs. 
28  Koipe contends that the Court should dismiss the appeal and order the appellant to pay
the costs. 
I - 7398 
ACEITES DEL SUR-COOSUR v KOIPE 
29  OHIM contends that the first ground put forward in support of the appeal should be
rejected and leaves it to the discretion of the Court to adjudicate on the second ground. 
The appeal 
30  The appellant raises two grounds in support of its appeal. The first ground alleges
infringement of Article 8(1) and (2)(a)(i) and (ii) of Regulation No 40/94. The second
ground, which comprises two parts, alleges infringement of Article 8(1)(b) of that
regulation. 
31  The first ground of appeal and the first part of the second ground of appeal, in which the
appellant sets out arguments that are partly similar and partly complementary, should
be assessed jointly. 
The first ground of appeal and the first part of the second ground of appeal 
Arguments of the parties 
32  By its first ground of appeal, the appellant claims that the Court of First Instance erred
in law by holding at paragraph 48 of the judgment under appeal that since all the
figurative elements of the various registrations relied on by Koipe are identical it is
‘irrelevant ’ to determine which of those registrations meet the condition of being 
‘earlier trade marks ’, within the meaning of that provision, for the purposes of 
exercising the right of opposition. 
I - 7399 
33 
34 
35 
36 JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
Hence, the Court of First Instance in essence accepted, contrary to the letter of Article 8
of Regulation No 40/94 and the priority of registration rule applying in opposition
proceedings, that a later trade mark, in this case the Community registration, may be
relied upon against an application for registration of an earlier trade mark, in this case
the mark in respect of which registration was applied for, solely by reason of the fact that
the figurative element of the later mark is identical to that of other earlier marks of the
same opponent. That error on the part of the Court of First Instance also had significant
consequences as regards investigating the existence of a likelihood of confusion
between the marks at issue, in particular with regard to determining the relevant
territory and public. 
Koipe and OHIM contend that the appellant seeks to attribute to the wording of
paragraphs 47 and 48 of the judgment under appeal a disproportionate significance and
scope, since, contrary to what the appellant claims, the Court of First Instance did not
hold that the Community registration constituted an earlier right for the purpose of
exercising the right of opposition and did not attribute any value to it when considering
the existence of a likelihood of confusion between the marks at issue. The true position
is that in that judgment the Court of First Instance assessed only whether there was a
likelihood of confusion between those marks solely in ‘Spain ’ and on the ‘Spanish 
market ’. 
In the first part of its second ground, the appellant maintains that, by not expressly
excluding the Community registration from the group of marks opposed by Koipe, the
Court of First Instance improperly took that registration into consideration and,
consequently, incorrectly delimited the relevant public and territory, assessing the
likelihood of confusion on the part of the public in the Community and not on the part
of the public in Spain. 
The appellant maintains in that regard that, although the Court of First Instance
referred to the ‘Spanish market ’ for olive oil in the judgment under appeal, that
reference was not made in connection with the assessment of the likelihood of 
confusion, but in another context and with a much more limited objective, that is to say,
that of assessing the ‘distinctive character of the figurative elements ’ of the marks at 
issue, which is only one factor among many to be assessed in order to decide on the
existence of the likelihood of confusion, namely that of similarity between the marks. 
I - 7400 
ACEITES DEL SUR-COOSUR v KOIPE 
37  Koipe and OHIM respond in essence that when the Court of First Instance assessed the
distinctive character of the figurative and word elements of the marks at issue it did so
specifically in order to resolve the issue of whether there existed a likelihood of
confusion between those marks in Spain. They add that in the context of that 
assessment the Court clearly and correctly limited its assessment of the relevant public
and territory to that Member State. 
Findings of the Court 
38  It must first be recalled that Article 8(1)(b) of Regulation No 40/94 provides that, upon
opposition by the proprietor of an earlier trade mark, the trade mark applied for must
not be registered if because of its identity with or similarity to the earlier trade mark and
the identity or similarity of the goods or services covered by the trade marks there exists
a likelihood of confusion on the part of the public in the territory in which the earlier
trade mark is protected. Such likelihood of confusion includes the likelihood of 
association with the earlier trade mark. In addition, Article 8(2)(a) provides that ‘earlier 
trade marks ’ means Community trade marks, trade marks registered in a Member State
or trade marks registered under international arrangements, with a date of application
for registration which is earlier than the date of application for registration of the
Community trade mark. 
39  In this case, Koipe ’s opposition to registration of the mark La Española was based on a
number of national and international registrations and on the Community registration,
with a date of application for registration which is later than the date of the application
for registration filed by Aceites del Sur. 
40  It is not apparent from reading the relevant paragraphs of the judgment under appeal
that the Court of First Instance expressly excluded that Community registration from
the trade marks to be taken into account for the purposes of considering the merits of
Koipe ’s opposition. 
I - 7401 
JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
41  However, even if the Court of First Instance had infringed Article 8(1) and (2) of
Regulation No 40/94 by doing so, such an error of law would not affect the validity of the
judgment under appeal. 
42  First, at paragraph 48 of the judgment under appeal the Court properly acknowledged
Koipe ’s right to oppose registration of the mark La Española, referring to all the
registrations relied upon by that company, which included several marks with a date of
application for registration which was indeed earlier than the date of application for
registration of the trade mark sought. Therefore, it cannot be maintained that by not
expressly excluding the Community registration in the context of its assessment of the
merits of Koipe ’s opposition the Court of First Instance did take it into consideration
and thus, as the appellant claims, established the principle that a later mark may be
relied upon against an application for registration of a mark that has been filed earlier. 
43  Secondly, the error allegedly committed by the Court of First Instance did not have any
decisive bearing as regards determination of the relevant territory and public in the
context of investigating the existence of a likelihood of confusion between the marks at
issue. 
44  It is thus clear from paragraphs 53, 63, 77 to 80, 92 and 111 of the judgment under
appeal that the Court of First Instance assessed the existence of that likelihood with
specific and consistent reference to ‘Spain ’ and the ‘Spanish market ’ without, as the 
appellant moreover acknowledged at the hearing, mentioning any other territory or
public. 
45  The first ground of appeal and the first part of the second ground of appeal must
therefore be rejected as being in part unfounded and in part ineffective. 
I - 7402 
ACEITES DEL SUR-COOSUR v KOIPE 
Second part of the second ground of appeal 
Arguments of the parties 
46  By the second part of the second ground of appeal, the appellant maintains, first, that in
spite of the fact that Community case-law provides that the likelihood of confusion
must be appreciated globally, taking into account all factors relevant to the 
circumstances of the case (see, inter alia, Case C-251/95 SABEL [1997] ECR I-6191, 
paragraph 22, and Case C-361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-643,
paragraph 18), the Court of First Instance failed to consider two extremely important
and relevant factors, namely, first, the earlier coexistence of the marks at issue over a
long period on the Spanish market for olive oil and, second, their reputation on that
market. Thus the Court of First Instance did not properly evaluate the element of
similarity between those marks. 
47  Secondly, the appellant considers that, far from following the rule of ‘global assessment ’ 
and ‘overall impression ’ within the meaning of the case-law mentioned in the preceding
paragraph, the Court of First Instance ‘took an analytical approach ’ and thus made a 
separate and successive examination of the figurative elements and word elements of
the marks at issue, incorrectly giving the figurative elements decisive importance and
wrongly denying any importance to the word elements of the marks. 
48  Hence, by giving the figurative element ‘dominance ’ in relation to all the other 
constituent elements of the mark La Española and thus making those elements
negligible in terms of the overall impression produced by that mark, the Court of First
Instance distorted the facts and evidence in the file. 
49  Thirdly, the Court of First Instance did not correctly assess the ‘relevant public ’ 
element, which is decisive for the global assessment of the likelihood of confusion
between the marks at issue, in so far as the profile it gave of the average Spanish 
I - 7403 
JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
consumer of olive oil was one of a careless and rash consumer rather than that of ‘a 
reasonably well informed and reasonably observant and circumspect consumer ’, as 
required by Community case-law. 
50  Koipe, by contrast, considers that the Court of First Instance applied the global
assessment rule in an appropriate manner, since in the judgment under appeal it
correctly assessed the existence of a likelihood of confusion, taking into account all the
relevant factors in the case, including the fact that the marks at issue had not coexisted
peacefully on the Spanish market. 
51  According to Community case-law, not all the constituent elements of a mark bear the
same value or importance. Consequently, the fact that the Court of First Instance
attributed a dominant character to the figurative element, enabling it to conclude that
there existed a likelihood of confusion between the marks at issue, whilst also taking
account of the word element, does not infringe any of the provisions of Community
trade mark law, since it did not in any way deviate from the rules laid down by law and by
case-law governing the assessment of such a likelihood. 
52  As regards considerations concerning the allegedly incorrect categorisation by the
Court of First Instance of the Spanish consumer of olive oil, Koipe submits that these
are mere factual allegations which are inadmissible at the appeal stage. 
53  OHIM, for its part, considers first of all that the fact that the Court of First Instance
failed to take into account the coexistence of the signs in the relevant territory and the
reputation in Spain of the mark for which registration was sought had no decisive
bearing on the outcome reached by that Court as regards the assessment of the
likelihood of confusion. 
I - 7404 
ACEITES DEL SUR-COOSUR v KOIPE 
54  Next, as to the method adopted by the Court of First Instance in investigating the
likelihood of confusion, OHIM maintains that the Court compared the signs at issue
from a visual point of view, taking only the figurative elements into consideration and
disregarding the impact which the word elements would have on the overall impression
of the two signs, given the weak degree of distinctiveness of the word sign ‘La Española ’. 
55  However, OHIM does not give a view on the merits of such a method but leaves this to
the discretion of the Court of Justice, merely indicating two possible outcomes. 
56  First, that assessment by the Court of First Instance can be upheld only if the Court of
Justice accepts that, in view of the insignificant nature of the other elements comprising
the marks at issue, the Court of First Instance was able to make a proper comparison of
the signs representing those marks solely on the basis of their figurative elements and if,
due to the similarity established between those signs, it was not necessary to make a
comparison of the names used in them from the word and conceptual points of view. 
57  Secondly, if the Court of Justice were to conclude, on the contrary, that the reasoning
given by the Court of First Instance is an inadequate basis for its assessment of the signs
at issue or that the reasoning on which the Court of First Instance relied is invalid at law,
the judgment under appeal should be set aside on the ground of infringement of
Article 8(1)(b) of Regulation No 40/94 and the case should be referred back to the Court
of First Instance for it to make a new comparison of the signs that accords with the
interpretation of the Court of Justice, that is to say, one which takes account of the signs
as a whole. 
58  Lastly, as regards the challenges relating to the description of the Spanish consumer of
olive oil, OHIM, like the appellant, maintains that the public taken into consideration
by the Court of First Instance in the judgment under appeal has a profile that is closer to
the careless consumer than to the consumer who is reasonably observant. 
I - 7405 
JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
Findings of the Court 
59  As regards the appellant ’s arguments concerning the errors committed by the Court of
First Instance in its investigation of the existence of a risk of confusion between the
marks at issue, it must first be recalled that, as the Court of Justice has consistently held,
the existence of such a likelihood of confusion on the part of the public must be
appreciated globally, taking into account all factors relevant to the circumstances of the
case (see, to that effect, SABEL , paragraph 22; Case C-342/97 Lloyd Schuhfabrik Meyer
[1999] ECR I-3819, paragraph 18; order of 28 April 2004 in Case C-3/03 P Matratzen 
Concord v OHIM [2004] ECR I-3657, paragraph 28; Case C-120/04 Medion [2005] 
ECR I-8551, paragraph 27; and Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, 
paragraph 34). 
60  According to further settled case-law, the global assessment of the likelihood of
confusion, in relation to the visual, aural or conceptual similarity of the marks in
question, must be based on the overall impression given by the marks, bearing in mind,
in particular, their distinctive and dominant components (see OHIM v Shaker , 
paragraph 35 and the case-law cited). 
61  In particular, the Court has held that in the context of examination of the likelihood of
confusion, assessment of the similarity between two marks means more than taking just
one component of a composite trade mark and comparing it with another mark. On the
contrary, the comparison must be made by examining each of the marks in question as a
whole (see order in Matratzen Concord v OHIM , paragraph 32; Medion , paragraph 29; 
and OHIM v Shaker , paragraph 41). 
62  In that regard, the Court has also held that, according to established case-law, the
overall impression created in the mind of the relevant public by a complex trade mark
may, in certain circumstances, be dominated by one or more of its components.
However, it is only if all the other components of the mark are negligible that the
assessment of the similarity can be carried out solely on the basis of the dominant 
I - 7406 
ACEITES DEL SUR-COOSUR v KOIPE 
element ( OHIM v Shaker , paragraphs 41 and 42, and Case C-193/06 P Nestlé v OHIM 
[2007] ECR I-114, paragraphs 42 and 43 and the case-law cited). 
63  It is therefore in the light of those principles that the second part of the second ground
put forward by the appellant in support of its appeal should be examined. 
64  In that regard, it must be observed that, in the judgment under appeal, the Court of First
Instance first held, at paragraphs 88 to 90 of that judgment, that the Board of Appeal
was wrong to state that the word element of the marks at issue was of overriding
importance in the light of the weak distinctive character of the figurative elements of
those marks. 
65  By contrast, the Court of First Instance afforded overriding importance to the figurative
element by stating clearly at paragraph 91 of the judgment under appeal that that
element held a more important position, in terms of surface, than the word element,
thus making it subsidiary in relation to the figurative element. According to paragraph
109 of that judgment, it was that figurative element which, in the particular
circumstances in which the goods at issue were sold, acquired greater importance. 
66  The Court of First Instance thus attributed to the figurative element of the marks at
issue the character of a dominant element in relation to the other elements comprising
those marks, in particular the word element. That enabled it correctly to base its
assessment on the similarity of the signs and on the existence of a likelihood of
confusion between the marks La Española and Carbonell by giving the visual 
comparison of those signs an essential character. 
67  Contrary to what the appellant contends, such an approach did not, however, mean that
the Court of First Instance took no account of the impact of the word element. 
I - 7407 
JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
68  Thus, having made a detailed comparative assessment of the marks at issue from a
visual point of view at paragraph 100 of the judgment under appeal, the Court then held,
at paragraphs 103 and 104 of that judgment, that the elements common to the two
marks, seen as a whole, produced an overall visual impression of great similarity, since
the La Española mark reproduced very precisely the essence of the message and the
visual impression given by the Carbonell mark, thus inescapably giving rise to a
likelihood of confusion on the part of the consumer between those marks. 
69  The Court of First Instance lastly held, at paragraphs 105 and 111 of the judgment
under appeal, that such a likelihood of confusion is not diminished by the existence of
the different word element, in view of the latter ’s very weak distinctive character in
relation to the mark in respect of which registration was sought, which refers to the
geographical origin of the goods. 
70  In other words, whilst considering the figurative element of those marks as a dominant
element in relation to the other elements of which they are comprised, the Court of First
Instance did not fail to take the word element into account. On the contrary, it is
precisely in the context of the assessment of that element that the Court of First
Instance described it essentially as negligible, on the ground, in particular, that the
differences between the word signs of the marks at issue do not invalidate the
conclusion it reached after the comparative examination of those marks from the visual
point of view. 
71  The conclusion must therefore be drawn that in this case, contrary to what the
appellant claims, the Court of First Instance correctly applied the rule that a global
assessment should be undertaken, as laid down in the Community case-law referred to
in paragraphs 59 to 62 above, when determining whether a likelihood of confusion
exists between the marks at issue. 
72  Consequently, it cannot be claimed, as the appellant does, that the Court of First
Instance, far from complying with that case-law, distorted the facts and evidence in the
file. 
I - 7408 
ACEITES DEL SUR-COOSUR v KOIPE 
73  Also, with regard to the appellant ’s argument challenging the description of the Spanish
consumer of olive oil given by the Court of First Instance, it must be stated first of all
that the latter ’s assessment in that regard complies with the settled case-law of the
Court of Justice on that subject. 
74  Thus, as the Court of First Instance rightly noted at paragraph 107 of the judgment
under appeal, the perception of marks in the mind of the average consumer of the goods
or services in question plays a decisive role in the global appreciation of the likelihood of
confusion ( SABEL , paragraph 23, and Lloyd Schuhfabrik Meyer , paragraph 25) and, for
the purposes of that global appreciation, the average consumer is deemed to be
reasonably well-informed and reasonably observant and circumspect, but his level of
attention is likely to vary according to the category of goods or services in question
(Lloyd Schuhfabrik Meyer , paragraph 26). 
75  In the light of those principles, the Court of First Instance held in particular, at
paragraphs 108 and 109 of the judgment under that appeal, that olive oil is a consumer
product which is very common in Spain, that it is most commonly purchased in
supermarkets or establishments where goods are arranged on shelves and that the
consumer is guided more by the visual impact of the mark he is looking for. 
76  The Court of First Instance was therefore right to conclude from this, at paragraphs 109
and 110 of the judgment under appeal, that in those circumstances the figurative
element of the marks at issue acquires greater importance, which increases the 
likelihood of confusion between them, and the differences between the signs at issue are
more difficult to distinguish since, as the Court of Justice has moreover had occasion to
observe (see, to that effect, OHIM v Shaker , paragraph 35, and Nestlé v OHIM , 
paragraph 34 and the case-law cited), the average consumer normally perceives a mark
as a whole and does not proceed to analyse its various details. 
77  Secondly, as regards the appellant ’s argument concerning the findings made by the
Court of First Instance with regard to the average consumer ’s level of attention, it must 
be observed that it relates exclusively to factual elements. 
I - 7409 
JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
78  In that regard, it is important to note that the Court of First Instance has exclusive
jurisdiction to make findings of fact, save where a substantive inaccuracy in its findings
is attributable to the documents submitted to it, and to appraise those facts. The 
appraisal of the facts thus does not, save where the clear sense of the evidence before it
has been distorted, constitute a point of law which is subject, as such, to review by the
Court of Justice on appeal (see Joined Cases C-456/01 P and C-457/01 P Henkel v 
OHIM [2004] ECR I-5089, paragraphs 41 and 56, and Case C-238/06 P Develey v OHIM 
[2007] ECR I-9375, paragraph 97). 
79  Since no distortion has been established or even alleged by the appellant in the present
case, that argument must be considered manifestly inadmissible. 
80  Lastly, as regards the appellant ’s claims that, in failing to take into account, in the
judgment under appeal, the earlier coexistence of the marks at issue over a long period
on the Spanish market for olive oil and their reputation on that market, the Court of
First Instance did not properly evaluate the element of similarity between those marks,
those arguments cannot be accepted. 
81  Although the Court of First Instance did not actually evaluate the relevance of those two
elements, in the present case, as the Advocate General observed in point 31 of his
Opinion, that fact had no decisive bearing on the outcome reached by that Court in
connection with its assessment of the likelihood of confusion. 
82  First, although the possibility cannot be ruled out that the coexistence of two marks on a
particular market might, together with other elements, contribute to diminishing the
likelihood of confusion between those marks on the part of the relevant public, certain
conditions must be met. Thus, as the Advocate General suggests at points 28 and 29 of
his Opinion, the absence of a likelihood of confusion may, in particular, be inferred from
the ‘peaceful ’ nature of the coexistence of the marks at issue on the market concerned. 
I - 7410 
83 ACEITES DEL SUR-COOSUR v KOIPE 
It is apparent from the file, however, that in this case the coexistence of the La Española
and Carbonell marks has by no means been ‘peaceful ’ and the matter of the similarity of
those marks has been at issue between the two undertakings concerned before the
national courts for a number of years. 
84  Secondly, as regards the argument concerning reputation, it must first be recalled that it
is the reputation of the earlier mark, in this case the Carbonell mark, which must be
taken into account when determining whether the similarity between the goods
covered by the two marks is sufficient to give rise to the likelihood of confusion (see, to
that effect, Case C-39/97 Canon [1998] ECR I-5507, paragraph 24). Therefore, in this
case the appellant cannot rely on the reputation of the La Española mark on the Spanish
olive oil market, as it did moreover, unsuccessfully, at first instance, in order to establish
the absence of a likelihood of confusion between the marks at issue, since it is a matter 
of agreement that that mark postdates the Carbonell mark. Moreover, as regards the
reputation of the latter mark, the appellant does not explain how the Court of First
Instance, if it had considered that element, could have attributed an enhanced 
distinctive character to the La Española mark and thereby excluded the existence of a
likelihood of confusion between those marks. 
85  In those circumstances, it is therefore necessary to reject those arguments as 
ineffective. 
It follows from all of the foregoing considerations that neither of the two grounds on
which the appellant relies in support of its appeal can succeed and that the appeal must
therefore be dismissed. 
I - 7411 86 
JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
OHIM ’s final considerations with regard to certain pleas of inadmissibility raised at first
instance 
87  In its written observations, OHIM sets out, in addition to its response to the grounds of
appeal, considerations concerning some pleas of inadmissibility that were rejected by
the Court of First Instance and asks the Court of Justice to give its views in that regard,
bearing in mind that such issues would have an effect on OHIM ’s defence in a number 
of cases pending before the Court of Justice. 
88  In particular, OHIM maintains that the Court of First Instance infringed Article 63(3) of
Regulation No 40/94 in so far as that provision does not permit it to deliver a judgment
with an outcome conflicting with that of a contested decision of a Board of Appeal as it
did in the judgment under appeal. 
89  In addition, according to OHIM, the Court of First Instance should have declared
inadmissible some of the documents produced at first instance on the ground that,
under Article 74 of Regulation No 40/94, they should have been submitted before the
Board of Appeal. 
90  In the circumstances of this case, in order to challenge the findings reached by the Court
of First Instance, OHIM should either have lodged an appeal against the judgment
under appeal or have lodged a cross-appeal in so far as the arguments concerned had
not been invoked in the appeal. 
91  Although OHIM did not appeal against the judgment under appeal, it is necessary none
the less to examine whether its challenges may be considered to constitute a cross -
appeal. 
I - 7412 
92 ACEITES DEL SUR-COOSUR v KOIPE 
In that regard, it should be noted that for a submission to be regarded as a cross-appeal
under Article 117(2) of the Rules of Procedure, the party which relies on it must seek to
set aside, in whole or in part, the judgment under appeal on a plea in law which was not
raised in the appeal. Whether that is the case here is to be determined by reference to
the wording, aim and context of the passage in question in OHIM ’s response (Case 
C-413/06 P Bertelsmann and Sony Corporation of America v Impala [2008] 
ECR I-4951, paragraph 186). 
93  In this case, it is settled that nowhere in its response does OHIM use the expression
‘cross-appeal ’; rather, it submits its arguments in the form of final considerations
seeking, in essence, to obtain clarification from the Court of Justice regarding the
interpretation of the provisions of Regulation No 40/94. Nor does it request the Court
of Justice to set aside the judgment under appeal. 
94  In those circumstances, it is clear that those considerations do not constitute a cross -
appeal and there is therefore no need for the Court to make a ruling on this point. 
Costs 
95  Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings by
virtue of Article 118 thereof, the unsuccessful party is to be ordered to pay the costs if
they have been applied for in the successful party ’s pleadings. Since Koipe has applied
for costs against the appellant and the latter has been unsuccessful, the appellant must
be ordered to pay Koipe ’s costs. Since OHIM has not applied for costs against the
appellant, it must be ordered to bear its own costs. 
I - 7413 
JUDGMENT OF 3. 9. 2009 — CASE C-498/07 P 
On those grounds, the Court (First Chamber) hereby: 
1.  Dismisses the appeal; 
2.  Orders Aceites del Sur-Coosur SA to pay, in addition to its own costs, those of
Koipe Corporación SL; 
3.  Orders the Office for Harmonization in the Internal Market (Trade Marks and
Designs) (OHIM) to bear its own costs. 
[Signatures] 
I - 7414