Urteile

FOCUS ./. FOCUS Money: Kein Anspruch der älteren, aber nicht bekannten Marke „FOCUS”

Leitsatz des Gerichts

1. Die Marken „Focus“ und „FOCUS MONEY“ sind nicht verwechslungsfähig.

2. Der Bestandteil „MONEY“ prägt das Gesamtzeichen „FOCUS MONEY“ mit.

3. Der Begriff „MONEY“ ist für Waren und Dienstleistungen aus dem DV-Bereich nicht beschreibend.

Tenor

THE OFFICE HEREBY:

1. Rejects opposition number B 370 140 in its entirety.

2. Orders the opponent to bear the costs

Tatbestand

I. FACTS AND PROCEDURE

On 12/04/2000 the applicant filed application No. 1 606 441 to register the words "Focus Money" as a trade mark for a range of goods and services in classes 09, 16, 35, 36, 38, 41 and 42 of the Nice Classification.

The application was published in Community Trade Marks Bulletin No. 5/2001 of 08/01/2001.

On 28/03/2001 the opponent filed a notice of opposition to the application.

The opposition is based on Benelux trade mark registration No. 454 766 of the figurative mark "Focus". It was filed on 19/12/1988 and registered in July 1989 for a range of goods and services in classes 09, 16, 35 and 42.

The opponent has proved that it is the current owner of the registered mark by filing the corresponding documents.

The opponent bases its opposition on some of the goods and services which are covered by its trade mark registration, namely:

Class 09: measuring, controlling and analysing apparatus; computers, computer peripheral apparatus, computer terminals, data processing apparatus, apparatus for storage and reproduction of data; office machines, data carriers (recorded or not) in the form of tapes, discs, records and other similar goods, for use in combination with all aforesaid apparatus and devices, including registered computer programs

Class 42: automation services, computer programming, providing advise in the field of automation, computer programming

The opponent directs its opposition against some of the goods and services which are covered by the application, namely:

Class 09: computers and dataprocessing apparatus; computer software, in particular for the scanning, displaying, processing and output of multimedia date on computer networks, including the Internet, machine-readable date carriers of all types containing information, and sound and image recording carriers, in particular floppy discs, CD-ROMs, DVDs, chip cards, magnetic cards, video cassettes, compact discs and video discs; collections of information recorded on data carriers; data banks

Class 42: computer programming (software development); design, development, consultancy, maintenance and servicing in the field of computer software, connecting computer systems to date networks, telephone installations and telephone networks, maintenance and upgrading of computer programs, and online updating services; date base services, namely the gathering storage and updating of date and other information, research and development in the field of date processing, providing of documentation

The ground of the opposition is that of Article 8 (1) (b) of Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trade mark (CTMR) (OJ OHIM 1/95, p. 53).

On 23/05/2001 the applicant was notified of the opposition which had been assigned number B 370 140.

English was established as the language of the proceedings.

On 24/07/2001 the adversarial part of the proceedings began.

Both parties filed observations and evidence within the time limits set 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 argues that there is a likelihood of confusion because the marks to be compared are similar and the goods and the services to be compared are either identical or similar. It states that the similarity of the marks resides in the fact that their representations share an identical distinctive element - the word "Focus". In addition, the opponent claims that its trade mark has a high degree of distinctiveness and in particular that "Focus" "is a very distinctive word for the goods and services" covered by its mark.

In reply, the applicant argues that the opposition cannot be successful because the requirement for similarity of the marks is not met. The marks are not similar since it cannot be accepted that the word "Money" is not as distinctive as the word "Focus" in the representation of the applicant's mark. Given the goods and services against which the opposition is directed, there is no reason to perceive "Money" as a descriptive word for data carriers or for computer programming. Furthermore, the applicant does not consider that the opponent's trade mark has a distinctive character per se.

In further observations the opponent maintains that there is a likelihood of confusion. As regards the signs, it states that its mark is distinctive for the goods and services, for which it is registered, because its dominant element "Focus" does not describe these goods and services. In contrast, the opponent insists on "Money" being a descriptive word and thus a weak element of the representation of the applicant's mark. As far as the goods and the services are concerned, it restates that they are either identical or similar.

In final observations filed by the applicant, it reiterates that the word "Money" has no descriptive meaning with regard to the products of the CTM application. It argues that the opposition should be rejected because of the dissimilarity of the signs.

For the remainder, reference is made to the contents of the file.

Entscheidungsgründe

Ill. DECISION

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 prescribed time limit, form and conditions.

Consequently, the opposition is admissible.

B. ON THE SUBSTANCE

Likelihood of confusion (Article 8 (1) (b) CTMR)

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

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.

a. Comparison of the signs

The likelihood of confusion must be determined by means of a global appraisal of the visual, aural and conceptual similarity of the marks, on the basis of the overall impression given by the marks, bearing in mind, in particular their distinctive and dominant components (Judgment of the Court of Justice, Case C-251/95 Sabel BV v Puma AG, Rudolf Dassler Sport (1997) OJ OHIM 1/98, p. 91, paragraph 22 et seq).

The signs to be compared are the following:

FOCUS
Earlier trade mark

FOCUS MONEY
CTM application

The earlier trade mark consists of a figurative element (a combination of three squares situated in one another) and the word "Focus". The applicant's sign is a word mark consisting of two words, namely "Focus" and "Money". The applicant's sign reproduces the verbal element of the earlier mark. Since the earlier right is protected in the territory of the Benelux countries, the determination of the existence of a likelihood of confusion needs to be based on the perceptions of the consumers in that territory.

Before proceeding with the visual, phonetic and conceptual comparison, it is necessary to establish the distinctive elements of each of the signs. As the ECJ points out in the above-mentioned judgement "the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details". It is the distinctive element of the sign which generally determines the global perception of a sign on the part of consumers. The more an element of a mark provides information about the goods andlor services covered by the registration, the more descriptive and the less distinctive it is.

As regards the earlier mark, it is worth recalling that a consists of two elements. The first one represents a commonplace geometric shape which thus is of very limited distinctiveness at best. The second one is the word "Focus". Given that the relevant territory in the present opposition is that of the Benelux countries, it has to be taken into account how the average consumer in these countries will perceive the word "Focus". In the main languages spoken in the Benelux countries, namely Dutch and French and to a lesser extent German -, "Focus" and its derivative nouns are common words and thus form part of the vocabulary of the average consumer. They stand for "a centre of interest", "a point of concentration'. As such the word is of average distinctiveness. This conclusion is confirmed also by the fact that "Focus" is not descriptive for the goods and services on which the opposition is based.

As far as the applicant's sign is concerned, it is necessary to recall that a contains two elements - the word "Focus" and the word "Money". The word "Focus" has already been analysed in the previous paragraph. With regard to "Money", suffice it to note that it is an English word by origin and its meaning is obvious in English. Being a foreign word for consumers in the Benelux countries, it has a certain degree of distinctiveness as an element of a trade mark. In addition, although the word "Money" is a word of the basic English language, and thus known to the average Benelux consumer, it cannot be argued that this has affected its distinctiveness as an element of a sign applied for goods and services not related to financial matters.

As for the argument of the opponent that "Money" could be considered descriptive for IT goods and IT services through which information about financial matters can be provided, it has to be observed that although this can be the case, the specification of the goods and services of the CTM application is broad enough to include IT products supplying information of any kind. In other words, the word element "Money" cannot be regarded as descriptive for goods and services related to the usage of computers. Therefore, the Office holds that "Money" could be considered as distinctive as the word "Focus" as an element of the applicant's sign.

Visually, the signs to be compared coincide in the word "Focus". However, the applicant's sign includes also the word "Money" which, possessing a comparable degree of distinctiveness to the word "Focus", is capable of distinguishing the two signs sufficiently. Therefore, the two signs are considered to be visually dissimilar.

Phonetically, the applicant's sign will require the pronunciation of one more word, which being a sufficiently distinctive element of the sign will serve in combination with the word "Focus" for indicating verbally the source of origin of the respective goods and services. In addition, there is no reason to assume that the average Benelux consumer will shorten the applicant's sign verbally to "Focus" (which could have been the case, if the pronunciation of "Money" posed difficulties) and thus confuse it will the opponent's mark. In view of all this, the two signs are considered to be phonetically dissimilar.

Conceptually, the two signs convey different messages to the public to the extent to which it can be argued that their verbal content could be perceived as a reference to the products offered on the market. While the verbal part of the opponent's mark represents a word meaning "centre of interest", the combination of the words of which the applicant's sign is compound suggests that "the centre of interest is put on financial matters". Notwithstanding the fact that the latter sign is not applied for goods and services related to financial matters, the two signs express different concepts. Therefore, they are conceptually dissimilar.

To summarise, the compared signs are conceptually, visually and phonetically dissimilar.

b. Conclusion

In the light of the above considerations, the finding of dissimilarity of the relevant signs would not after, even if the other relevant factors of likelihood of confusion were fulfilled to a maximum extent, in particular if the goods and/ or services were identical and the earlier mark was highly distinctive.

In this sense, the finding of identity and/ or similarity of the goods and services covered by the earlier registration and the CTM application will not affect the finding that there is no likelihood of confusion In the present opposition since the signs at issue are dissimilar. According to Article 8 (1) (b) CTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Consequently, it is not necessary to proceed with a comparison of the goods and services.

Similarly, the possible finding that the earlier mark possesses a high degree of distinctiveness cannot after the finding that there is no likelihood of confusion due to the lack of similarity of the signs. The distinctiveness of the earlier mark is a factor whose establishment in conjunction with the establishment of similarity of the signs and that of the goods and/ or services can lead to the finding that there is a likelihood of confusion. It cannot compensate for the dissimilarity of the signs, neither for that of the goods and/ or services protected by these signs. As the CFI held recently "Since ...the signs in dispute cannot in any way be regarded as identical or similar from the visual, phonetic or conceptual points of view, the fact that the earlier mark is widely known or enjoys an extensive reputation... cannot after the overall assessment of the risk of confusion." (Judgment of the Court of First Instance, Case T-311/01 Editions Albert Rene v OHIM-TRUCCO (Starix), paragraph 61, in fine). Consequently, it is not necessary to proceed with examination of the arguments of the parties in relation to the claimed distinctiveness of the earlier registered trade mark.

Given the dissimilarity of the signs, the present opposition must be rejected.

C. COSTS

According to Article 81 (1) CTIVIR, 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) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing the CTMR (W OHIM 2-3/95, p. 259), the apportionment of costs must be dealt with in the decision on the opposition.

Since the opposition is unsuccessful, the applicant is the successful party and the opponent shall bear the costs incurred by the applicant.

Udo Pfleghar
Dorothée Schliephake
Osmo Brander

Rechtsgebiete

Markenrecht