Urteile

FOCUS ./. FOCUS

Tatbestand

I. FACTS AND PROCEDURE

On 17/01/1997 Focus Magazin Verlag GmbH, "the applicant", filed application No 453 720 to register the word "FOCUS" as a trade mark in classes 3, 6-9, 14-16, 20, 21, 24-26, 28, 29, 32-36, 38, 39, 41 and 42 of the Nice classification.

The application was published in Community Trade Marks Bulletin No 86/99 of 02/11/1999.

On 02/02/2000 Focus Do It All Limited, "the opponent", filed a notice of opposition to the application.

The opposition is based on the following earlier rights.

• UK trade mark registration No 2 112 668 of the figurative mark "FOCUS". It was applied for and registered on 12/10/1996 for a range of goods in classes 4, 6, 11, 19, 20, 27 and 31.

• Earlier well known mark "FOCUS" in the UK for various goods in the following classe: 4, 6, 7, 8, 11, 16, 19, 20, 21, 27 and 31.

The opponent also bases his opposition on the fact that his earlier registered trade mark has acquired reputation in the United Kingdom.

The opponent bases his opposition on all the goods of the earlier rights but only directs his opposition against some of the goods and services of the CTMA, namely against specific goods in classes 6, 7, 8, 16 and 21.

The grounds of the opposition are those of Article 8(1)(a), 8(1)(b) and 8(5) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark ("CTMR") (OJ CHUM 1/95, p. 52).

On 23/06/2000 the applicant was notified of the opposition under No B 236 382. On the same date the opponent was informed of certain limitations in classes 9 and 34 effected by the applicant. Nevertheless the opponent maintained his opposition.

English was established as the language of the proceedings.

The adversarial part of the opposition proceedings began on 24/08/2000.

Both parties filed observations and evidence within the time limits given by the Office.

The Office considers that it has sufficient information and now gives a ruling on the opposition.

II. ARGUMENTS OF THE PARTIES

The opponent claims that there is likelihood of confusion between the application and his earlier marks because of the identity between the signs and the identity between the respectively protected goods. He also claims that his mark has become well known and has acquired reputation in the United Kingdom.

The applicant contests the conclusions of the opponent and argues that the goods at issue are different and thus would not give rise to likelihood of confusion. He further argues that the evidence submitted to prove the reputation of the earlier trade mark is insufficient and, consequently, that the opposition should be rejected as unfounded.

Entscheidungsgründe

A. ON THE ADMISSIBILITY OF THE OPPOSITION

The opposition fee has been paid in accordance with the Regulation.

The opposition has been entered within the time limit, form and conditions prescribed.

Consequently, the opposition is admissible.

B. ON THE SUBSTANCE

1. UK trade mark registration No 2 112 668

According to Rule 16(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing the CTMR ("IR") (OJ OHIM 2-3/95, p. 258), the notice of opposition shall preferably be accompanied by evidence of the registration of the earlier mark, such as a certificate of registration.

According to Rule 16(3) IR, any evidence not submitted together with the notice of opposition or subsequent thereto, may be submitted within such period after commencement of the adversarial part of the opposition proceedings, as the Office may specify pursuant to Rule 20(2).

According to Rule 17(2) ]R, where the evidence in support of the opposition is not filed in the language of the opposition proceedings, the opposing party must file a translation of that evidence into that language within the period specified by the Office pursuant to Rule 16(3).

According to the last sentence of Article 42(3) CTMR and Rule 20(2) IR, if the notice of opposition does not contain particulars of the facts, evidence and arguments, as referred to in Rule 16(1) and (2), the Office shall call upon the opposing party to submit such particulars within a period specified by the Office.

In the present case, together with his notice of opposition the opponent filed a copy of the registration certificate of his UK trade mark No 2 112 668 showing that the mark is registered in the name of Focus DIY Limited. The declaration made by the opponent's representative that this company eventually changed its name to Focus Do It All Limited is not sufficient to cover the lack of evidence that the trade mark is indeed registered in the name of the opponent.

On 23/06/2000, pursuant to Rules 16(3), 17(2) and 20(2) IR, the Office invited the opponent to furnish any further facts, evidence or arguments in support of his opposition. In particular, he was requested to provide evidence of the earlier marks on which the opposition was based and he was advised that the evidence had to show that the marks are currently in force and in the name of opponent. The opponent did not file any official evidence showing either the change of name of the opponent or that a record was made at the UK Trade Mark Office, showing such a change of name of the owner of the above registration. The only relevant document filed was a written declaration by the finance director of the opponent claiming that the opponent had been formerly known as Focus DIY Limited. This declaration cannot be taken into account since it comes from a private source and what is more from the opponent himself. It does not come from an official source and, therefore veracity of the information therein is not guaranteed. Nothing further in this respect was filed within the allocated time limit.

The rationale of Rule 16 IR is to give the applicant and the Office the possibility of checking if earlier rights invoked against the CTM application are valid and can be legitimately exercised by the opponent. To this end the opponent has to submit evidence of the continued and valid existence in his name of the earlier trade mark registrations on which the opposition is based.

In the absence of such evidence the applicant and the Office lack the possibility of verifying if the opponent indeed validly owns this earlier right.

Taking into account the above, the Office concludes that opponent failed to file sufficient evidence to substantiate the opponent's entitlement to the above-mentioned earlier right claimed as a basis of the opposition. Therefore, the opposition must be rejected insofar as it is based on UK registration No 2 112 668 and on Article 8(1)(a); 8(1)(b) and 8(5) CTMR.

2. Earlier well known mark "FOCUS"

According to Article 8(1) CTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

1. if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected.

2. 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.

According to Article 8(2)(c) CTMR, for the purposes of paragraph 1, "Earlier trade marks" means, amongst others,

trade marks which, on the date of application for registration of the Community trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the Community trade mark, are well known in a Member State, in the sense in which the words "well known" are used in Article 6 bis of the Paris Convention.

In order for Article 8(2)(c) CTMR to be applied among other prerequisites it has to be determined whether the earlier mark is well known. In this respect several factors have to be taken into account. In particular, the following factors are relevant: the degree of knowledge or recognition of the mark in the relevant sector of the public, the duration, extent and geographical area of the use or promotion of the mark or the value associated with the mark. Other indications could also be relevant, such as, the duration and geographical area of any registration, and/or any applications for registration of the mark, to the extent that they reflect use or recognition of the mark, the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognised as well known by competent authorities.

In order to prove that he is the owner of the earlier well known trade mark "FOCUS" in the United Kingdom for various goods in classes 4, 6, 7, 11, 19, 20, 27 and 31, the opponent submitted the following evidence:

1. Sworn declaration of the opponent's finance director stating that the trade mark has been used in the UK since 1985 and that the goods provided under the opponent's mark included goods of common metal signboards of metal, motor driven machine tools, in particular motor driven tools for crafts and hobbies, hand tools and implements, signs and models, printed matter, books, posters, stickers, calendars, photographs, stationery, adhesives (for stationery), typewriter and office requisites, ballpoint pens, fountain pens, models and display boards, household and kitchen utensils and containers (not of precious metal), brushes, glassware, porcelain and earthenware. Pet products have also been sold under the mark since 1996. The declaration also states that the opponent's expenditure on advertising since 1990 was approximately £ 26.2 million. The sales and goods sold under the mark in the UK in the year 1999 amounted to £ 170.9 million.

2. Eleven copies of photographs showing the sign FOCUS DIY exhibited an shop front fascias and lorries. None of these photos are dated.

3. Copies of three advertisements from February, April and December 1997 of products bearing the sign FOCUS DIY.

According to Article 8(2)(c), a well known mark can oppose the registration of a CTM application provided that the evidence submitted proves that it existed previously to the filing of the CTM application or, if that is the case, the date of a successfully claimed priority.

In the present case, the CTM application was filed on 17/01/1997. None of the supplied photographs (Doc. b) show any date and the advertisements (Doc. c) are dated after the filing of the application. Therefore, even if the documents under b) and c) could show or contribute to showing sufficient knowledge of the mark FOCUS in the market, this could only be associated with a date later than that of the filing of the CTM application. Therefore, such evidence does not prove that a well known mark existed previously to the filing of the CTM application.

Rule 20(2) IR identifies several possible means of evidence; nevertheless, this does not automatically mean that any of these means is sufficient, in itself, for the purposes of proving use or awareness of the market. Therefore, the contents of the sworn declaration have to be assessed in conjunction with the rest of the evidence submitted by the opponent, and the Office has to verify if the evidence succeeds in constituting a convincing and coherent set of documents that points to the conclusion claimed by the opponent.

In the present case the rest of the evidence submitted by the opponent is clearly insufficient to back up the statement that the opponent has put his mark to use in the United Kingdom market for the goods he claims and for the turnover stated. Moreover, it has also to be considered that the is onus on the opponent to prove that he is the owner of a well known trade mark, namely that his sign has gained a recognition in the market either owing to the intensive presence of the mark in the market of the relevant goods, the promotion and advertisement investments, the duration of the use or the geographical area covered or any other reason or combination of reasons.

Consequently, as according to the aforementioned conclusions the opponent has not given any evidence showing the perception consumers could have of the claimed well known mark, this ground fails and the opposition has to be rejected as regards the claim of an earlier well known mark and Article 8(1)(a) and 8(1)(b) CTMR.

C. COSTS

According to Article 81 (1) CTMR, the losing party in opposition proceedings must bear the fees incurred by the other party, as well as all costs.

According to Rule 94(1) IR, the apportionment of costs is dealt with in the decision on the opposition.

As the opposition is rejected in its entirety, the opponent is the losing party and, consequently has to bear all costs incurred by the other party in the course of these proceedings.

1: Opposition No B 236 382 is rejected in its entirety

2: The costs are to be borne by the opponent.

Wouter Verburg

Alexandra Apostolakis

Julio Laporta Insa

Rechtsgebiete