Urteile

FOCUS ./. FOCUS ON BEAUTY: Englischsprachiger Zusatz nur beschreibend

Leitsatz des Gerichts

1. Die Gemeinschaftsmarkenanmeldung „FOCUS ON BEAUTY“ ist mit der deutschen Marke „FOCUS“ auf dem Gebiet Deutschlands für „Mittel für Körper- und Schönheitspflege“ in schriftbildlicher und klanglicher Hinsicht verwechslungsfähig.

2. Trotz der Tatsache, dass es sich bei dem Begriff „BEAUTY“ um ein Wort der englischen Sprache handelt und diesem somit normalerweise ein gewisser Grad an kennzeichenprägender Wirkung in Deutschland zukommt, ist dieser ausnahmsweise in der angegriffenen Marke „FOCUS ON BEAUTY“ nicht kennzeichenprägend, weil es sich bei „BEAUTY“ um ein Element des englischen Grundwortschatzes handelt, den der deutsche Verbraucher kennt und deswegen als Hinweis auf den Bereich der geschützten Produkte versteht. Wegen dieses beschränkten kennzeichenprägenden Charakters des Bestandteils „ON BEAUTY“ wird der Verkehr in einem schriftbildlichen Zeichenvergleich zwischen „FOCUS“ und „FOCUS ON BEAUTY“ das Element „BEAUTY“ ausblenden.

3. Die Verwechslungsgefahr in klanglicher Hinsicht zwischen den Zeichen „FOCUS“ und „FOCUS ON BEAUTY“ wird dadurch begründet, dass die Verbraucher die angegriffene Marke beim Ausprechen auf den ersten Bestandteil „FOCUS“ verkürzen.

1. There is a likelihood of confusion between the trademarks „FOCUS“ and „FOCUS ON BEAUTY“ with regard to health and beauty products in the territory of Germany.

2. Being a foreign word for consumers in Germany the English term “BEAUTY” should enjoy a certain degree of distinctiveness. Yet, as this term is merely an element of the basic English language and will therefore be understood by the German public as an indicator for cosmetics and beauty products it is of a rather low degree of distinctiveness. Consequently, in the attacked trademark application “FOCUS ON BEAUTY” the main distinctive element is the first word “FOCUS” constituting the likelihood of confusion under a visual point of view.

3. The signs “FOCUS” and “FOCUS ON BEAUTY” will also be confused phonetically since the German consumers might shorten the applicant’s sign verbally to “FOCUS”.

Tatbestand

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

I. FACTS AND PROCEDURE

On 11/04/2000 the applicant filed application No. 1 604 206 to register the words "FOCUS ON BEAUTY" as a trade mark for a range of goods in classes 03 namely:

astringents for cosmetic purposes, non-medicated lip balm, bath oil, bath powder, bath sponges, non-medicated bath salts, blusher, body cream, body oil, body powder, bristle brushes, cold cream, cologne, cosmetics compacts, cosmetic pencils, cosmetic brushes, cosmetic sponges, cosmetic applicators, eye cream, hand cream, night cream, skin-cleansing cream, skin cream, vanishing cream, perfume, eye makeup, eye makeup remover, eye shadow, face powder, facial powder, facial scrubs, foundation makeup, bath gel, hair gel shower gel, lip gloss, lipstick, ioda products, hair spray, makeup, manicure and pedicure implements, mascara, massage oil, moisturizer, nail polish, rouge, sachets, hair shampoo, toilet water, wrinkle removing skin care preparations.

The application was published in Community Trade Marks Bulletin No. 104/2000 of 26/12/2000.

On 01/03/2001 the opponent filed a notice of opposition to the application.

The opposition is based on German trade mark registration No. 394 07 564 of the word mark "FOCUS". lt was filed on 19/12/1994 and registered in 23/05/1996 for a range of goods and services in classes 03, 05, 06, 07, 08, 09, 14, 15, 16, 18, 20, 21, 24, 25, 26, 28, 29, 30, 33, 34, 36, 38, 39, 41 and 42.

The opponent claims that its trade mark enjoys a reputation in Germany for all goods and services it has been registered.

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 all goods and services which are covered by its trade mark registration.

The opponent directs its opposition against all goods which are covered by the application.

The grounds of the opposition is that of Article 8 (1) (b) and 8 (5) of Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trade mark (CTMR) (OJ OHIM 1/95, p. 53).

On 23/11/2001 the applicant was notified of the opposition which had been assigned number B 360 604.

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 intormation 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 to be compared are either identical or similar. It states that the similarity of the marks resides in the fact that the marks 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 and enjoys also a reputation in Germany.

The applicant submits that where one mark contains another it does not automatically lead to finding that the respective marks are confusingly similar. The additional elements of the sign "on beauty" mean that the marks produce a totally different overall impression. It points out that there are especially important differences between the marks especially conceptually. Finally it argues that the opponent has failed to prove that its "FOCUS"- registration would enjoy a reputation in Germany.

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

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 prescribed time limit, form and conditions.

Consequently, the Opposition is admissible.

B. ON THE SUBSTANCE

1) Likelihood of confusion Art. 8 (1) (b) CTMR

According to Article 8 (1) of the CTM Regulation (Council Regulation No 40/94), 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.

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 C39/97, Canon Kabushiki Kaisha v Metro-Goldwyn Mayer lnc[1998], OJ OHIM No. 12/98, page 1407 et seq., paragraph 29.)

(a) Comparison of goods

When making an assessment of similarity of the goods concerned, all relevant factors relating to these goods should be taken into account. These factors include, inter alia, their nature, their purpose and method of use and whether they are in competition with each other or complementary (see Canon, paragraph 23). Further factors include the pertinent distribution channels (in particular the sales outlets), the relevant public, and the usual origin of the goods.

The goods and services to be compared are:

FOCUS ON BEAUTY
Contested CTMA

astringents for cosmetic purposes, non-medicated lip balm, bath oil, bath powder bath sponges, nonmedicated bath salts, blusher, body cream, body oil, body powder, bristle brushes, cold cream, cologne, cosmetics compacts, cosmetic pencils, cosmetic brushes, cosmetic sponges, cosmetic applicators, eye cream, hand cream, night cream, skin-cleansing cream, skin cream, vanishing cream, perfume, eye makeup, eye makeup remover, eye shadow, face powder, facial powder, facial scrubs, foundation makeup, bath gel, hair gel shower gel, lip gloss, lipstick, ioda products, hairspray, makeup, manicure and pedicure implements, mascara, massage oil, moisturizer, nail polish, rouge, sachets, hair shampoo, toilet water, wrinkle removing skin care preparations.

FOCUS
Earlier German trade mark No 410050 of goods in class 3

soap; perfumes, essential oils, make-up cosmetic products, hair tonic, body care and beauty products; after shave lotion and cream, deodorant; toilet articles namely cleaning agents and toothpaste dentacare/hygienel.

A general comment of goods in question of both contested CTM application and the earlier German registration is that the earlier they both cover a wide range of products cosmetics including beauty/body care products, hair-care products, and toilet products.

The goods of the contested CTM application can be grouped into above three categories as regards their nature, and as follows from the comparison of the goods and services:

1) Cosmetics beauty / body care products: astringents for cosmetic purposes, nonmedicated lip balm blusher, body cream, body oil, body powder bristle brushes, cold cream, cologne, cosmetics compacts, cosmetic pencils, cosmetic brushes, cosmetic sponges, cosmetic applicators, eye cream, hand cream, night cream, skin-cleansing cream, skin cream, vanishing cream, perfume, eye makeup, eye makeup remover, eye shadow, face powder, facial powder, facial scrubs, foundation makeup, lip gloss, lipstick makeup, manicure and pedicure implements, mascara, massage oil moisturizer, nail polish, rouge, sachets, toilet water, wrinkle removing skin care preparations ioda products (CTM)

All the above goods are included in the larger specification of make-up, cosmetic products and body care and beauty products of the earlier mark the goods in question are therefore considered to be identical.

2) Hair-care products: hair gel, hair spray, hair shampoo (CTM)

The goods of the contested CTM application are included in a larger specificafion of body care and beauty products of the earlier German mark the goods are therefore considered to be identical

3) Toilet products: bath oil, bath powder, bath sponges, non-medicated bath salts, bath gel, shower gel (CTM)

The goods of the contested CTM application are included in a larger specification of body care and beauty products of the earlier German mark, the goods are therefore considered to be identical.

(b) 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 ON BEAUTY
CTM application

The earlier trade mark consists only of the word "FOCUS". The applicant's sign is a word mark consisting of three words, namely "FOCUS", "ON" and "BEAUTY". Since the earlier right is protected in the territory of Germany, 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 and / or services covered by the registration, the more descriptive and the less distinctive it is.

As regards the earlier mark, it is worth recalling that it consists of one element only. Given that the relevant territory in the present opposition is that of Germany, it has to be taken into account how the average consumer in this country will perceive the word "FOCUS". "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 contains three elements - the word "Focus" and the word combination "ON BEAUTY". The word "FOCUS" has already been analysed in the previous paragraph. With regard to "ON BEAUTY", suffices it to note that it is an English expression by origin and its meaning is obvious in English. Being a foreign word for consumers in the Germany, it has a certain degree of distinctiveness as an element of a trade mark. In addition, although the word "BEAUTY" is a word of the basic English language, and thus known to the average German consumer, it can be argued that this has affected its distinctiveness as an element of a sign applied for goods and services are related to cosmetics and beauty products.

Visually, the signs to be compared coincide in the word "FOCUS" in the beginning. However, the applicant's sign includes also the words "ON BEAUTY" which in this case, has got low degree of distinctiveness. Therefore, the two signs are considered to be visually similar.

Phonetically, the applicant's sign will require the pronunciation of two more words, it can be considered that 'the German consumers might shorten the applicant's sign verbally to "FOCUS" and thus confuse it will the opponent's mark. In view of this, the two signs are considered to be phonetically similar.

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 beauty". Even though the latter sign is applied for goods related to "beauty products", the two signs express different concepts. Therefore, they are conceptually dissimilar.

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

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. It 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)

In this case the signs are visually and phonetically similar. Therefore, according to the above-mentioned principle of interdependence a lesser degree of similarity between the goods and services can lead to a likelihood of confusion.

Therefore, there is a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected namely in Germany for all the goods that the CTM is applied for.

4) Reputation Art. 8 (5) CTMR

The opponent claims that its German trade mark registration No 394 07 564 of trade mark "FOCUS" has developed a reputation in Germany in respect of the all the goods of and services that it has been registered.

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Article 8(5) CTMR lays down the following requirements which must be satisfied for this provision to be applicable:

• the earlier registered mark must enjoy a reputation in the relevant territory;


• the goods of the CTM application are not similar to those for which the earlier trade mark is registered;


• the CTM application must be identical with, or similar to, the earlier mark;


• the use of the sign applied for must be capable of taking an unfair advantage of, or being detrimental to, the repute or the distinctiveness of the earlier mark;


• such use must be without due cause.

Along with the notice of opposition the opponent filed the following evidence to prove a reputation of the earlier trade mark:

A survey carried out in Germany in order to examine whether "Focus" can be considered as a famous trade mark, this survey was carried out by Infratest Burke GmbH & Co, Marketingforschung.

Since the opponent is already a winning party at this stage and the outcome of the decision would not be altered even though the earlier German trade mark "Focus" would enjoy a reputation in Germany. Therefore it is not necessary to comment the documents that the opponent has filed in order to prove a reputation of its mark.

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 (OJ OHIM 2-3/95, p. 259), the apportionment of costs must be dealt with in the decision on the opposition.

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

ON THESE GROUNDS, THE OFFICE DECIDES:

1. Upholds opposition number B 360604 for all the contested goods.

2. Rejects application number 1 604 206 in its entirety.

3. Orders the applicant to bear the costs.

Alicante, 27/05/2004
The Opposition Division

Bernhard MÜLLER
Osmo BRANDER
Dorothée SCHLIEPHAKE

Rechtsgebiete