Urteile

FOCUS ./. FOCUS TV

Leitsatz des Gerichts

1. Die Marke „Focus“ und die Marke „FOCUS TV“ sind nicht verwechslungsfähig, weil schon die Zeichen zu unähnlich sind. In der angegriffenen Marke „FOCUS TV“ ist nämlich der Bestandteil „TV“ aufgrund seiner grafischen Gestaltung und wegen des fehlenden beschreibenden Charakters kennzeichenprägend.

2. Dass bestimmte Waren und Dienstleistungen notwendige Voraussetzung für die Informationsversorgung durch das Medium des Fernsehens sind, begründet noch nicht die Annahme, dass für diese der Markenbestandteil „TV“ beschreibend ist.

1. There is no likelihood confusion between the trademarks „Focus“ and „FOCUS TV“ since the relevant signs are dissimilar. Both the graphical composition of the attacked trademark “FOCUS TV” and the absence of any descriptiveness of “TV” for the protected goods and services underline the distinctive role of the element “TV”.

2. The argument that the goods and services applied for are related to and necessary for the provision of information through the medium of television is farfetched and does not render “TV” anymore descriptive for said goods and services.

Tatbestand

THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)

I. FACTS AND PROCEDURE

On 06/05/1996 the applicant filed application No 361 717 to register the sign as a trade mark in classes 9, 16, 35, 37, 38, 41 and 42.

The application was published in Community Trade Marks Bulletin No 061/98 of 17/08/1998.

On 12/11/1998 the opponent filed a notice of opposition to the application.

The opposition is based on the following earlier rights:

- Benelux trade mark registration No 454 766 of the figurative mark . lt was filed and registered on 19/12/1988 for goods and services in classes 9, 16 and 42.

- International trade mark registration No 539 480 of the figurative mark with effect in Denmark, Germany, Greece, Spain, France, Italy, Austria, Portugal, Finland and Sweden. lt was filed and registered on 05/06/1989 for goods and services in classes 9, 16 and 42.

The opponent has proved that it is the current owner of the registered marks by filing copies of the registration certificates.

The opponent bases its opposition on all the goods and services that are covered by its registrations.

The opponent directs its opposition against all goods and services covered by the application.

The grounds of the opposition are those laid down in Article 8(1)(a)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark ("CTMR") (OJ OHIM 1/95, p. 53).

The applicant was notified of the opposition on 09/09/1999.

English was established as the language of the proceedings.

The adversarial part of the proceedings began on 10/11/1999.

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

The Office considers that it has sufficient information and will now decide on the opposition.

II. ARGUMENTS OF THE PARTIES

The opponent claims that there is a likelihood of confusion because the signs in dispute coincide in their dominant part, which is the word "FOCUS". The opponent submits that the goods are identical in part and similar in part.

The applicant contests the opponent's arguments and argues that the Marks are visually, phonetically and conceptually sufficiently different to exclude both identity and likelihood of confusion. The applicant further questions the identity and similarity between the opponent's goods and his own goods.

With respect to the further submissions of the parties, the Office refers to the file content.

Entscheidungsgründe

III. 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 time limit, form and conditions prescribed.

Consequently, the opposition is admissible.

B. ON THE SUBSTANCE

1. Identity of the goods and signs - Article 8(1)(a)

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

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

A sign is identical with a trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer (see Judgment of the Court of Justice, Case C-291/00, LTJ Diffusion SA v Sadas Vertbaudet SA [2003], OJ OHIM 6/03, p. 1373 et seq., paragraph 54, for the interpretation of the corresponding provision of Article 5(1)(a) of the directive).

The marks are not identical because the earlier mark is figurative and consists of the letter "F" followed by a colour representation of the planet earth and the letters "CUS", printed on a red background, the whole being spanned by the big letters "TV". On the other hand, the contested application is the word "FOCUS" preceded by a stylized letter "O".

Article 8(1)(a) CTMR requires an identity between both the signs concerned and the goods and services covered. Since the signs are not identical, there is no identity within the meaning of that article, irrespective of the goods/services covered by the respective signs. Consequently, to the extent that it is based on this ground, the opposition is unfounded.

2. Likelihood of confusion

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

if because of its identity with or similarity to the ealier 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.

The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (see Judgment of the Court of Justice, Case C-39/97, Canon Kabushiki Kaisha v Metro-Goldwyn Mayer Inc[1998], OJ OHIM No. 12/98, page 1407 et seq., paragraph 29.)

b) Comparison of signs

In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (cf. Judgment of the Court of Justice, Case C-251/95 Sabèl BV v Puma AG, Rudolf Dassler Sport [1997] OJ OHIM 1/98, p. 91, paragraph 22 et seq.). The trade marks to be compared are the following:

Earlier trade mark	CTM application

The earlier trade marks "FOCUS" are protected in the Beneluxcountries, Denmark, Germany, Greece, Spain, France, Italy, Austria, Portugal, Finland and Sweden.

The earlier right is a figurative mark. It consists of the word "FOCUS" in bold, capital letters, preceded by the letter "O", which is represented in identical font, and stylized in such a way as to create a perspective.

The CTM application consists of dominant capital letters "TV", joined, blue coloured and carved in big, bold relief, and of a black capital "F" followed by a coloured representation of the planet earth and by the word element "CUS". "F" and "CUS" are printed on red coloured rectangles.

The dominant part "TV" cannot be said to be descriptive of the goods and services applied for, as the opponent argues. The goods and services applied for neither include television, nor television programs, nor the broadcasting thereof. The argument that the goods applied for are related and necessary for the provision of information through the medium of television is farfetched and does not render "TV" any more descriptive of said goods and services. Football for instance would be descriptive of a ball, or of a game, but not of the leather of which a football is made of.

As "TV" is the striking component of the contested sign, and as the letter "F", followed by the coloured representation of the earth and by the letters "CUS" will first be read as "F CUS", the mark shares no visual and phonetic similarity with the earlier Mark "O FOCUS". The same goes even if the letter "F", followed by the coloured representation of the earth and by the letters "CUS" is read as "FOCUS".

Conceptually speaking, "TV" will immediately be understood by everybody as referring to a "television", and "FOCUS", on the other hand, will be perceived in the part of the European Union where the earlier marks are registered and where English is understood as "a point upon which attention, activity, etc., is directed or concentrated". In the parts of the EU where English is not understood, the Office submits that the relevant public will be able to immediately discem the concept of a television from another, unknown one.

To summarise: the marks are visually, phonetically and conceptually different.

3. Conclusion

Likelihood of confusion within the meaning of Article 8(1)(b) CTMR must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character. (See Canon, paragraph 17 et seq.)

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. lt should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question (Judgment of the Court of Justice Case C-342/97, Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV, OJ OHIM No 12/1999, p. 1585, paragraph 26).

As to the distinctive character of the earlier mark, the opponent did not explicitly claim that his mark is particularly distinctive by virtue of intensive use or reputation. Therefore, the assessment of the distinctiveness of the earlier mark must rest on the distinctiveness perse of that sign which must be seen as normal in the present case.

As follows from the analysis above, the signs have many differences in visual, phonetic and conceptual respect. Taking into account the average degree of distinctiveness of the earlier mark, those differences suffice to safely exclude a likelihood of confusion in the territory in which the earlier marks are protected, even for identical goods "data carriers" vs "recording media" in class 9. Consequently, a fortiori, there can be no likelihood of confusion in respect of goods and services which would be similar to any of the goods and services of the earlier mark. Therefore it is not necessary to proceed to an analysis of the similarity of the remaining goods and services of the CTM application with goods and services of the earlier mark.

Considering the above, the Office concludes that the opposition must be rejected under Article 8(1)(b).

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) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing the CTMR ('IR') (OJ OHIM 2-3/95, p. 258), the apportionment of costs is dealt with in the decision on the opposition.

Since the applicant is the losing party in the opposition proceedings, he must bear all costs incurred by the other party in the course of those proceedings.

ON THOSE GROUNDS, THE OFFICE HEREBY:

1. Rejects opposition number B 102592 in its entirety.

2. Orders the opponent to bear the costs.

Alicante, 29/04/2004
The Opposition Division

BERNHARD MÜLLER
JEAN-MARC SCHULLER
RAFFAELLA BASSI

Rechtsgebiete

Markenrecht