Urteile

Prioritätsältere Marke FOCUS gegen prioritätsjüngeres Zeichen TOMORROW FOCUS AG

Leitsatz des Gerichts

1. Die Marken „FOCUS“ und „TOMORROW FOCUS AG“ sind im EDV-Bereich nicht verwechslungsfähig.

2. Das prioritätsjüngere Zeichen „TOMORROW FOCUS AG“ wird auch durch den abweichenden Bestandteil „TOMORROW“ geprägt.

3. Der Begriff „TOMORROW“ weist im Verhältnis zu Waren und Dienstleistungen der EDV-Branche keine beschreibenden Bezüge auf und ist deswegen im Verhältnis zu dem Begriff „FOCUS“ vergleichbar kennzeichenprägend.

Tatbestand

On 28/08/2002 the applicant filed application No 2833028 to register the figurative mark "TOMORROW FOCUS AG", as reproduced on the cover page, for various goods and services.

The opposition is directed against part of those goods and services, namely part of the goods and services claimed in classes 9 and 42.

The opposition is based on:

Earlier Community trade mark registration No 68585 for the figurative mark "FOCUS" registered for various goods and services

The opponent bases its opposition on part of these goods and services, namely classes 9 and 42.

The grounds of the opposition are those laid down in 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).

The opponent argues that there is a likelihood of confusion because of the similarity of the marks and because the goods covered by the two marks are identical and similar.

In reply, the applicant argues that the marks are not similar, therefore no likelihood of confusion may arise in the present case.

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.

1. Comparison of goods and services

In assessing the degree of similarity of the goods, all relevant factors relating to those goods or services themselves should be taken into account Those factors include, inter alia, their nature, their end users and their method of use, and whether they are in competition with each other or are complementary (cf. Judgement of the Court of Justice of 2910911998 in Case C-39/97, Canon Kabushiki Kaisha v. Metro Goldwyn-Mayer, Inc., OJ OHIM, No 121/998, p. 1419, par. 23). Such factors may also include the intended purpose of the goods, their manufacturers and the relevant distribution channels and retail outlets.

The opponent bases its opposition on the following goods:

"Measuring, controlling and analysing apparatus; computers, computer peripheral devices, computer terminals, word processing apparatus, apparatus and equipment for the storing and reproducing data; office machines; data carrying or non-data carrying products in the form of tapes, records, disks, and other similar products, for use in connection with all the aforementioned apparatus and equipment including registered computer programs; excluding apparatus, equipment, products and computer programs coming within the field of photogrammetry" in class 9

"Computerisation services, computer programming, consultancy in the field of computerisation, computer programming and automatic data processing; excluding services coming within the field of photogrammetry" in class 42

The goods of the CTM application against which the opposition is directed are:

"Computers and data-processing apparatus; computer software, in particular for the scanning, displaying, processing and output of multimedia data on computer networks, including the Internet" in class 9

"Computer programming and design of computer programs (computer software); maintenance and upgrading of computer programs, and on-line updating services; configuring computer networks by means of software" in class 42

Comparison of goods in class 9

"Computers and data-processing apparatus" of the CTM application are found to be identical to "computers, computer peripheral devices, computer terminals, word processing apparatus, apparatus and equipment for the storing and reproducing data" of the earlier mark.

"Computer software" of the CTM application is found to be identical to "data carrying or non-data carrying products in the form of tapes, records, disks, and other similar products, for use in connection with registered computer programs" of the earlier mark.

Comparison of services in class 42

"Computer programming and design of computer programs (computer software); maintenance and upgrading of computer programs, and on-line updating services; configuring computer networks by means of software' of the earlier mark are all services relating to the design and developing of computer hardware and software and therefore identical to the broad specification "Computerisation services" of the earlier mark

2. 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 (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 22 et seq.).

The signs to be compared are:

CTM application

Earlier CTM registration

The relevant territory is the European Union.

The CTM application is a figurative sign consisting in the word "TOMORROW" written in black upper case and the words "FOCUS" and "AG", respectively in red and black upper case, placed underneath the word 'TOMORROW and separated by a circular red design. The earlier mark consists in a design representing three concentric squares and the word "FOCUS" written in upper case.

Both marks share the same element FOCUS" being an English word denoting "a centre of interest",, "a point of concentration", "focal point" or "focal length".

Firstly, it should be noted that when weighing up the similarities and differences, the distinctiveness of the different elements of the marks plays an important role. The less distinctive parts will have less impact than the more distinctive parts since the consumer is likely to focus on the distinctive parts and keep them in mind.

Regarding the CTM application, the Office agrees with the opponent that the word "FOCUS" has a distinctive character in relation to the goods and services applied for, however cannot share the opinion that "TOMORROW" is a very weak element in view of its general and common character. On the contrary "TOMORROW" does not have any meaning in relation to the relevant goods and services and has therefore a comparable degree of distinctiveness to the word "FOCUS", therefore the Office sees no reasons why this element should be left aside in the comparison of the signs.

Coming now to the actual comparison, from a visual point of view, the two signs display a different length and consist of a different number of elements. The first thing that will strike the consumer's eyes is that the earlier mark is a five letters word, whereas the CTM application consists of a sequence of three words, two of which ("Tomorrow" and "AG") absolutely not present in the CTM application. Notwithstanding the fact that the two signs share the word "FOCUS", it must be noted that this word, whilst in red characters, appears only in a secondary position inside the CTM application, so that the first element which will catch the consumer attention will be the word "TOMORROW", since the first part of a mark is generally the one that is noticed first and is remembered more clearly than the rest of the sign. Moreover, the earlier sign also contains a device element, which although not being extraordinary distinctive, occupies the beginning position in the sign and is therefore not negligible. It further helps to differentiate the signs in dispute. Bearing also in mind that both signs contain relevant figurative elements, the Office concludes that all the different features collectively contribute towards differentiating the marks visually.

From a phonetic point of view, the contested application will be pronounced in three words, "TOMORROW-FOCUS-AG" with a clear split between the different words, whereas the earlier mark Wit be pronounced in two continuous syllables "FO-CUS". In the Office view, the presence of the element "TOMORROW' at the beginning of the CTM application along with its different length of spelling and phonetic rhythm will create an impression of dissimilarity with the mark "FOCUS".

Finally, from a conceptual point of view, a part from the element "AG", both "TOMORROW' and "FOCUS" are ordinary English dictionary words which will be understood by the English speaking consumers each in its actual meaning. Contrary to the opponent's opinion, in the Office view, the expression "TOMORROW FOCUS" will not be perceived by the English consumers as a slogan meaning "Focus for the future', simply because the compound "TOMORROW FOCUS" is not grammatically correct, being an association of two nouns or a noun and a verb and as such would not have a clear meaning in the English language. In lack of a clear meaning for this words compound, the Office excludes that the consumers will interpret "TOMORROW FOCUS" as the next generation of the "FOCUS" products or services, as stated by the opponent.

Under this circumstance, even if the two signs share the same word "FOCUS", the presence of the word "TOMORROW" in the CTM application suffices to exclude a conceptual similarity between the two marks.

3. Conclusion

It constitutes a likelihood of confusion within the meaning of Article 8(1)(b) CTMR if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings (see Judgment of the Court of Justice, Case C-39/97, Canon Kabushiki Kaisha v Metro-Goldwyn Mayer lnc[1998], OJ OHIM No. 12/98, page 1407 et seq., paragraph 29.)

Likelihood of confusion 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 consumers 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 these circumstances the Office concludes, that taking into account the clearly discernible aural, visual and conceptual differences between the trade marks under comparison, there is no relevant likelihood of confusion for the European public, even if the relevant goods and services are identical,

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 opponent 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:

DECIDES:

1. Rejects opposition number B 628307 in its entirety.

2. Orders the opponent to bear the costs.

FIXES THE COSTS AS FOLLOWS:

The amount of the costs to be paid by the opponent to the applicant pursuant to Article 81 (6) CTMR in conjunction with Rule 94 (3) IR shall be:

Representation costs 300 euro

Total amount: 300 euro

Alicante, 11/10/2005

The Opposition Division

Notice on the availability of an appeal:

Under Article 58 of the Community Trade Mark Regulation any party adversely affected by this decision has a right to appeal against this decision. Under Article 59 of the Regulation notice of appeal must be filed in writing at the Office within two months from the date of notification of this decision and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of 800 euro has been paid.

Notice on the review of the fixation of costs:

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. Under Rule 94 (4) of the Implementing Regulation such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of 100 euro (Article 2 point 30 of the Fees Regulation) has been paid.

Rechtsgebiete