Case C-498/07 P: Appeal brought on 16 November 2007 by Aceites del Sur-Coosur S.A. formerly Aceites del Sur S.A against the judgment delivered by the Court of First Instance (First Chamber) on 12 September 2007 in Case T-363/04 Koipe Corporacion S.L. v Office for Harmonisation in the Internal Market (Trade Marks and Designs)
Date: 2007-11-16
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, General Court (EU), action for annulment (EU), appeal, trade-mark law

26.1.2008

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Official Journal of the European Union

C 22/27

Question referred

Are Articles 10(1) and 12(1) of
the First Council Directive
89/104/EEC of 21 December 1988 to approximate the laws of
the Member States relating to trade marks (Trade Mark Direc-
tive) (1) to be interpreted as meaning that a trade mark is being
put to genuine use if it is used for goods (here: alcohol-free
drinks) which the proprietor of the trade mark gives, free of
charge, to purchasers of his other goods (here: textiles) after
conclusion of the purchase contract?

(1) OJ 1989 L 40, p. l.

perception of the mark. That error arises, on the one hand,
from the fact that the Court envisaged use of the mark only
through its incorporation into a packet of cigarettes, although
the shape of packaging for a given product can be perceived by
the public in a multitude of other forms, such as graphic or
three-dimensional representations of
the mark in advertising
material. The error of assessment arises, on the other hand,
from the fact
Instance reduced the
the Court of First
concept of a mark to its part which is perceptible by a prospec-
tive purchaser at the moment immediately prior to his purchase,
whilst the public concerned by a mark is composed of all those
who may be faced with it in the course of normal use of the
mark, which occurs both during the advertising of the product
before it has been purchased and during use or consumption of
the product after it has been purchased.

that

The appellant claims, thirdly and lastly, that the grounds of the
judgment under appeal are contradictory.

Appeal brought on 16 November 2007 by Philip Morris
Products SA against the judgment of the Court of First
Instance (Second Chamber) delivered on 12 September
2007 in Case T-140/06 Philip Morris Products v OHIM

(1) OJ 1994 L 11, p. 1.

(Case C-497/07 P)

(2008/C 22/52)

Language of the case: French

Parties

Appellant: Philip Morris Products SA (represented by: T. van
Innis and C. S. Moreau, lawyers)

Other party to the proceedings: Office for Harmonisation in the
Internal Market (Trade Marks and Designs) (OHIM)

Form of order sought

— Set aside the judgment under appeal;

— Order the Office to pay the costs.

Pleas in law and main arguments

the appellant claims that

By its appeal,
the Court of First
Instance infringed Articles 4 and 7(1)(b) of Council Regulation
(EC) No 40/94 of 20 December 1993 on the Community trade
mark (1). In this respect, it complains, first, that the Court of
First Instance based its assessment on a bias against the category
of marks in which the mark applied for falls. In finding that
consumers are not in the habit of making assumptions about
the origin of goods on the basis of their shape or of the shape
of their packaging, the Court of First Instance made a factual
finding which has no scientific foundation whatsoever and
misconstrues the human perception of signs in general, and of
shapes in particular.

Second, the appellant complains that the Court of First Instance
carried out an incorrect legal analysis of the relevant public's

Appeal brought on 16 November 2007 by Aceites del
Sur-Coosur S.A. formerly Aceites del Sur S.A against the
judgment delivered by the Court of First Instance (First
Chamber) on 12 September 2007 in Case T-363/04 Koipe
Corporacion S.L. v Office for Harmonisation in the
Internal Market (Trade Marks and Designs)

(Case C-498/07 P)

(2008/C 22/53)

Language of the case: Spanish

Parties

Appellant: Aceites del Sur-Coosur S.A., formerly Aceites del Sur
S.A. (represented by: J.-M Otero Lastres, lawyer)

Other parties to the proceedings: Koipe Corporacion S.L and Office
for Harmonisation in the Internal Market (Trade Marks and
Designs)

Form of order sought

— declare that the appeal against the judgment of the Court of
First Instance (First Chamber) of 12 September 2007 in Case
T-363/04 for infringement of Community law was lodged
in good time and in due form;

— uphold the appeal and, accordingly, set aside the judgment
of the Court of First Instance in its entirety in accordance
with Article 61 of the Statute of the Court of Justice and
Article 113 of the Rules of Procedure;

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Official Journal of the European Union

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— give final
permits;

judgment

if

the state of

the proceedings so

Part One

— alternatively,

if the state of the proceedings does not so
permit, 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, if necessary, state which of the
effects of the judgment set aside must be regarded as final
for the parties to the proceedings and, in accordance with
Article 112 of the Rules of Procedure, order the applicant,
now the respondent, to pay the costs.

Pleas in law and main arguments

This appeal against the judgment of the First Chamber of the
Court of First Instance of 12 September 2007 is based on the
two grounds set out below:

1. Infringement of Article 8(1) and (2)(a)(i) and (ii) of Regu-

lation No 40/94 (1)

The first infringement of Community Law committed by the
judgment appealed is the fact that it held to be ‘irrelevant’ the
question of which of the marks put forward by CARBONELL to
oppose the application for the Community trade mark LA
ESPAÑOLA No 236588 satisfy the condition of being ‘earlier’
marks.

If it had applied Article 8(1) and (2)(a)(i) and (ii) of Regulation
No 40/94, the judgment should have excluded KOIPE's Com-
munity mark CARBONELL No 338681 from the opposing
marks on the ground that that Community registration is not
an earlier mark within the meaning of Article 8(2)(a)(i) of Regu-
lation No 40/94. If it had acted in that way the only earlier
marks of KOIPE which could oppose the application for registra-
tion of
the Community mark LA ESPAÑOLA No 236588
would be CARBONELL's Spanish trade marks No 994364,
No 1238745 and No 1698613.

Delimited in that way, the earlier marks enforceable against the
application for registration of the Community mark LA ESPA-
ÑOLA No 236588 would, for the purposes of Article 8(1)(b),
be earlier marks protected in Spanish territory. Therefore, the
the likelihood of confusion between the Com-
existence of
munity mark LA ESPAÑOLA No 236588 and KOIPE's earlier
opposing marks would relate solely to the public on Spanish
territory, which is where KOIPE's earlier marks are protected,
and not the public on the whole of Community territory, as
those marks do not include any Community marks.

2. Infringement of Article 8(1)(b) of Regulation No 40/94

Article 8(1)(b) of Regulation No 40/94 governs the relative
ground of refusal of an application for registration of a Com-
munity trade mark on the ground that there is a likelihood of
confusion between the Community mark applied for and one or
more earlier opposing marks. Therefore, the judgment appealed
infringed that rule for the two reasons set out below:

The consequences of the improper delimitation of the earlier
the
marks which are enforceable against
application for Community
trade mark LA ESPAÑOLA
No 236588

the application of

The starting point for the first infringement of Article 8(1)(b)
complained of is the improper delimitation of the ‘earlier’ marks
enforceable against the Community trade mark application and
relates to the consequences that that improper delimitation of
the earlier opposing marks had on the way in which the judg-
ment appealed applied Article 8(1)(b) to the dispute which is
the subject of these proceedings.

From all of the submissions in Part One it may be concluded
that the judgment appealed infringed Article 8(1)(b) of Regu-
lation No 40/94 because:

— It did not

find CARBONELL's marks No 994364,
No 1238745 and No 1698613 to be the only earlier
opposing marks.

— CARBONELL's later Community mark No 338681 was not

expressly excluded from the opposing marks.

— As a consequence of the two preceding submissions ‘the
public in the territory in which the earlier marks were
protected’ was not correctly delimited,
the earlier marks
being exclusively Spanish marks the public in the relevant
territory was the Spanish consumer of olive oil.

— Although in some paragraphs the Court

refers to the
‘Spanish market for olive oil’, its assessment of that informa-
tion was made in a partial and limited manner, since that
information was taken into account only in determining the
distinctive character of the figurative elements of the signs at
issue.

— Consequently, the Court did not take account of that infor-
mation either in its overall assessment of the similarity of
the signs (since the Court does not mention the ‘Spanish
market for olive oil’ in assessing, for example, the distinctive
character of the verbal components of the signs at issue) or
in weighing up other factors which were also relevant in the
case in order to give a ruling on whether there was a likeli-
hood of confusion between the signs at issue.

Part Two

Effect of the improper delimitation of the opposing marks on
the scope of the public of the territory in which the earlier
mark is protected.
Incorrect determination and subsequent
assessment of the relevant factors for the determination of the
likelihood of confusion.

The reasoning put forward by the appellant to substantiate the
infringement of Article 8(1)(b) complained of in the Second part
is based on two grounds. First, the submissions set out above
relating to the improper delimitation of the ‘earlier opposing
marks’ and its influence on the scope ‘of the public of the terri-
tory in which the earlier mark is protected’. Second, an incorrect
determination and subsequent assessment of all the factors that
should have been taken into account in order to determine
whether there was a likelihood of confusion between Com-
munity mark applied for LA ESPAÑOLA No 236588 and
CARBONELL's earlier opposing Spanish marks No 994364,
No 1238745 and No 1698613.

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The arguments on which the appellant bases its opinion that
the judgment under appeal
infringed Article 8(1)(b) by its
improper application are as follows:

— The judgment appealed 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 compound marks
thereby infringing Article 8(1)(b) and the Community case-
law interpreting it.

commits another no less serious error which is to ‘take
account of a lower level of attention’ by consumers with
regard to marks of olive oil, instead of taking account of the
level attention normally paid to olive oil by the average
Spanish consumer who is reasonably well-informed and
reasonably observant and circumspect.

(1) Council Regulation of 20 December 1993 on the Community trade

mark.

It

is true that

The judgment appealed failed to do what it ought to have
done from the beginning, which was to examine the marks
using a ‘global assessment’ and the ‘overall impression’ made
by them. Instead, the judgment appealed used an analytical
approach from the outset and made a separate and succes-
sive examination of the figurative elements on one hand
(paragraphs 75 to 87) and the verbal components on the
other (paragraphs 88 to 93), giving decisive weight to the
figurative elements, denying any importance to the verbal
components.
the judgment appealed did
mention the criterion of the global assessment and overall
impression (paragraph 99), but it is also true that it is not
sufficient to mention and repeat a judicial criterion in order
to act correctly it is important to follow it and apply it
correctly to the case. That was not done in the judgment
appealed. In order to assess the similarity of the signs at
issue, the judgment appealed failed to apply the primary and
principal criterion of a global assessment and overall impres-
sion, and applied an analytical criterion, deriving first of all
from a breakdown of the marks into their figurative and
verbal components and then a separate assessment, first of
the two figurative components of the signs at issue and then
of the verbal component of LA ESPAÑOLA, omitting any
reference to the other verbal element of
the opposing
marks, the name CARBONELL.

Reference for a preliminary ruling from the De Rechtbank
van Eerste Aanleg
lodged on
te Brugge
16 November 2007 — Beleggen, Risicokapitaal, Beheer NV
v Belgische Staat

(Belgium)

(Case C-499/07)

(2008/C 22/54)

Language of the case: Dutch

Referring court

Rechtbank van Eerste Aanleg te Brugge (Belgium)

Parties to the main proceedings

Applicant: Beleggen, Risicokapitaal, Beheer NV

Second, the judgment appealed also infringed Article 8(1)(b),
because it did not assess two relevant elements in the case
such as earlier coexistence over a long period and notoriety
which were extremely relevant in order to determine the
likelihood of confusion between the Community mark
applied for LA ESPAÑOLA No 236588 and the earlier
opposing Spanish marks CARBONELL.

Defendant: Belgische Staat

Questions referred

— The perception of the average Spanish consumer of olive oil
and the supposed likelihood of confusion between the
marks at issue.

The judgment appealed, while it alludes to the profile of the
average consumer elaborated by Community case-law, does
not use that consumer model but constitutes the profile of
the average Spanish consumer of olive oil as a consumer
who is closer to the model of the average consumer used in
German case-law:
‘a careless and rash consumer’ than the
model European consumer chosen by Community case-law
who is ‘reasonably well-informed and reasonably observant
and circumspect’
(judgments LLOYD, paragraph 26, and
PICASSO, paragraph 38). In addition, the judgment appealed

that State from its

1. Must Council Directive 90/435/EEC of 23 July 1990 on the
common system of taxation applicable in the case of parent
companies and subsidiaries of different Member States (1), in
particular Article 4(1) thereof, be construed as precluding a
situation in which a Member State applies the exemption
relating to distributed profits which are received by a
company of
subsidiary in another
Member State, except when the subsidiary is liquidated, by
first including in full the distributed profits in the taxable
basis and then deducting 95 % of those profits from the
taxable basis but limiting the deduction to the amount of
profits made in the taxable period in which the distribution
of profits took place (after certain statutorily defined deduc-
tions)
(Article 205(2) WIB 1992 in conjunction with
Article 77 KB/WIB 1992), with the result that, if the profits
made in the relevant taxable period are smaller than the
amount of the aforementioned distributed profits, this does
not give rise to a transferable loss?