Urteile

FOCUS ./. GLOSS FOCUS

Leitsatz des Gerichts

1. Die Marken „FOCUS“ und „GLOSS FOCUS“ sind in Deutschland für den Bereich der Kosmetika verwechslungsfähig.

2. Weil der Bestandteil „GLOSS“ der angegriffenen Marke für Kosmetika beschreibend ist, wirkt die angegriffene Marke „GLOSS FOCUS“ als „GLOSS“-Linie der „FOCUS“-Produktreihe. Dies begründet die Gefahr des gedanklichen Inverbindungbringens.

1. There is a likelihood of confusion between the trademarks „FOCUS“ and „GLOSS FOCUS“ with regards to cosmetics on the territory of Germany.

2. Since the element „GLOSS“ is descriptive for cosmetics the public will perceive the younger trademark „GLOSS FOCUS“ as a „GLOSS“-line of „FOCUS“-products. This will allow the public to establish mental associations between the signs.

Tatbestand

On 02/04/2001 the applicant filed application No 2 161 628 to register the words "GLOSS FOCUS" as a trade mark in class 3.

The application was published in Community Trade Marks Bulletin No 90/2001 of 15/0/2001.

On 33/01/2002 the opponent filed a notice of opposition to the application.

The opposition is based on German trade mark registration No 39 407 564 of the word mark "FOCUS". lt was filed on 19/12/1994 and registered on 23/05/1996 for a range of goods and services in different classes, including class 3. The opponent invokes the reputation, and therefore an enhanced distinctiveness, of its trade mark.

The opponent has proved it is the current owner of the registered mark by filing the appropnate documents and their English translation.

The opponent bases its opposition on part of the goods that are covered by its registration and directs its opposition against the goods of the application.

The grounds of the opposition are those 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).

The applicant was notified of the Opposition on 08/04/2002.

English was established as the language of the proceedings.

The adversarial part of the proceedings began on 21/06/2002.

Only the opponent 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 signs are closely similar and because the goods covered by the CTM application are identical to some of the goods covered by the earlier registration.

The opponent further claims that its mark "FOCUS" has a reputation in Germany and that the applicant's mark will be seen as a part of its FOCUS-series. The opponent attached documents showing that it has several FOCUS-combinations, altogether 41, registered in Germany. Moreover the opponent claims that the CTMA would take unfair advantage of and be detrimental to the distinctive character and the repute of its earlier right.

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

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 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 goods

The earlier registration covers, inter alia, soap, perfumeries, essential oils, soap, make-up, cosmetic products, hair tonic, body care and beauty products, after-shave lotion and cream, deodorant in class 3.

The goods of the contested CTM application are cosmetic and make-up preparations in class 3.

The applicant's goods are identical to the goods make-up and cosmetic products of the earlier registration (the difference in the wording being de minimis and therefore irrelevant).

b) Comparison of the signs

According to the case-Iaw of the Court of Justice, 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" (see 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 23).

The signs which are to be compared are the following

FOCUS
Earlier mark

GLOSS FOCUS
CTM application

The relevant territory is Germany.

The earlier mark is a word mark consisting of the word "FOCUS" in standard typeface.

The later mark is also a word mark consisting of the words "GLOSS FOCUS" represented in standard type-face.

When it comes to the visual comparison of marks, the signs have a different length and a different number of letters. The later mark consists of two words, "GLOSS FOCUS", and ten letters altogether, whereas the earlier mark consists of one word, "FOCUS", with five letters. When confronted with the applicant's mark, the consumer would perceive, from a visual point of view, both terms in the same way, that is as equally dominant and eye-catching. lt is therefore concluded that, when considering the signs in their entireties, they present both elements of similarity and dissimilarity.

From an aural point of view, the signs have two syllables, [fo-cus] and three syllables [gloss fo-cus] respectively. As to the sequence of the syllables, the signs share two syllables out of four, the different syllable concerning the initial element of the later mark. It is concluded that, when referred to orally, the signs present both elements of similarity and dissimilarity.

Conceptually, the earlier mark, "FOCUS", would be perceived by the German public as being very close to the German term "fokus", which has the same meaning as the corresponding English term "focus", that is to say 1. a point of convergence of light or other electromagnetic radiation, particles, sound waves, etc., or a point from which they appear to diverge; 2. another name for focal point (sense 1) or focal length; 3. Optics. the state of an optical image when it is distinct and clearly defined or the state of an instrument producing this image: the picture is in focus; the telescope is out of focus; 4. a point upon which attention, activity, etc., is directed or concentrated; 5. Geometry. a fixed reference point on the concave side of a conic section, used when defining its eccentricity; 6. the point beneath the earth's surface at which an earthquake or underground nuclear explosion originates. Compare epicentre; 7. Pathol. the main site of an infection or a localized region of diseased tissue.

Used in respect of goods such as those covered by the earlier registration, and in particular make-up and cosmetic products, the word "FOCUS" on its own does not convey any specific meaning to those confronted with it. At the very most, it may be perceived as alluding, but in a very vague manner, to the fact that by using the opponent's products the user of the goods will become the focus, the centre of attention. Nevertheless, the mark as such conveys a very vague, indefinite notion. As to the later mark "GLOSS FOCUS", this combination, when seen in respect of goods such as make-up and cosmetics, will be perceived by the relevant consumers as referring to the fact that the goods render the skin smooth and shiny, lustrous. The word "gloss" is used in Germany to refer to goods of a cosmetic nature, for example lip gloss, and the term appears in German dictionaries (for example, the Muret-Sanders Langenscheidts Großwörterbuch Englisch-Deutsch). It is very likely that the average female consumer of cosmetic goods, who is reasonably well-informed, will therefore recognise the meaning of the word "gloss" and see it as a qualifier of the word "focus" which, per se considered, is meaningless when used in respect of class 3 goods. Thus, the public will perceive the later mark as referring to a "gloss" line of "FOCUS" products. In this sense, a mental association could be established between the two signs.

Given the above, it is concluded that the signs present both elements of similarity and dissimilarity from a visual and phonetic point of view, whereas from a conceptual point the signs do share a certain similarity, to the extent that the later mark could be seen as identifying a "gloss" line of "FOCUS' products.

c) Conclusion on the likelihood of confusion

According to the case-Iaw of the Court of Justice on Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) and that of the Court of First Instance on Regulation No 40/94, 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 (Cases C-39/97 Canon [1998] ECR I-5507, paragraph 29, C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 17, and T-104/01 Oberhauser v OHIM-Petit Libero (Fifties) [2002] ECR II-4359, paragraph 25).

The likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (Case C-251/95 SABEL v Puma [1997] ECR I-6191, paragraph 22; Canon, cited above, paragraph 16; Lloyd Schuhfabrik Meyer, cited above, paragraph 18; Case C-425/98 Marca Mode [2000] ECR I-4861, paragraph 40; and Oberhauser, cited above, paragraph 26).

This global assessment implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Canon, paragraph 17, and Lloyd Schuhfabrik Meyer, paragraph 19). The interdependence of these factors is expressly referred to in the seventh recital in the preamble to Regulation No 40/94, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on a variety of factors which include recognition of the trade mark on the market, the association which may be made of it with the sign as used or registered, and the degree of similarity between the mark and the sign and between the goods or services identified (Oberhauser, paragraph 27).

It also follows from the case-Iaw that, the more distinctive the earlier trade mark, the greater will be the likelihood of confusion (SABEL, cited above, paragraph 24, and Canon, paragraph 18), and such a high degree of distinctiveness must be established either in the light of the intrinsic qualities of the mark or owing to the reputation associated with it (Canon, paragraph 18, and Case T-99/01 Mystery Drinks v OHIM-Karlsberg Brauerei (MYSTERY) [2003] ECR II-0000, paragraph 34).

Moreover, the perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (GABEL, paragraph 23, and Lloyd Schuhfabrik Meyer, paragraph 25). For the purposes of that global appreciation, the average consumer of the goods concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. Account should also be taken of the fact that the average consumer has only rarely 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 (Lloyd Schuhfabrik Meyer, paragraph 26).

In the present case, the earlier mark is a German trade mark and the territory relevant to the analysis of the risk of confusion therefore consists of Germany. Furthermore, in view of the fact that the goods in issue are current consumer goods, meant for personal embellishment, the target public is the average female German consumer, who is deemed to be reasonably well-informed and reasonably observant and circumspect.

As far as the respective goods are concerned, these are identical.

Concerning the signs, it has been found that they present both elements of similarity and dissimilarity from a visual and phonetic point of view, whereas conceptually one could be seen as identifying a specific line of the other.

The earlier mark, consisting of the word "FOCUS" represented in standard upper case, possesses an average degree of inherent distinctiveness, since it does not describe, or allude to, the goods or any of their characteristics.

In light of the above, taking into account the interdependence principle and the circumstance that the goods are identical and that the signs do present elements of similarity, the Office concludes that there is likelihood of confusion in Germany. It is indeed very likely that the relevant (female) public will assume that the "GLOSS FOCUS" products are a specific line originating from the same manufacturer of the "FOCUS" products.

Given the above finding, reasons of procedural economy suggest not to examine the issue of the increased distinctiveness, or reputation, of the earlier trade 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 ("IR") (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 THOSE GROUNDS, THE OFFICE HEREBY:

1. Upholds opposition number B 471 484 in its entirety and rejects CTM application No 2 161 628.

2. Orders the applicant to bear the costs.

Alicante, 24/05/2004
The Opposition Division

Alain RASSAT
Paul BULLOCK
Sophie PETREQUIN

Rechtsgebiete