Urteile

FOCUS ./. LASER FOCUS: dominierendes Element einer Marke

Leitsatz des Gerichts

Deutsche Leitsätze:

1. Die Marken „FOCUS“ und „LASER FOCUS“ sind für „Zeitschriften“ verwechslungsfähig im Sinne von Art. 8 (1) b) GMV. In der Medienbranche ist es üblich, Varianten eines Kennzeichens zur Unterscheidung verschiedener Line Extensions einer Markenfamilie zu verwenden. Dies berücksichtigt, werden die Verkehrskreise eine mit „LASER FOCUS“ gekennzeichnete Zeitschrift als ein neues Produkt der u.a. für Zeitschriften bekannten „FOCUS“-Markenfamilie sehen.

2. Nach den Grundsätzen der Wechselwirkungslehre kann die Gefahr von Verwechslungen auch bei einem geringeren Grad an Zeichenähnlichkeit vorliegen, wenn die zu beurteilenden Waren und Dienstleistungen sehr ähnlich sind und die Widerspruchsmarke aufgrund ihrer Bekanntheit in den Verkehrskreisen sehr kennzeichnungskräftig ist.

3. Der geringere Grad der Zeichenähnlichkeit zwischen den Marken „FOCUS“ und „LASER FOCUS“ wird unter Beachtung dieser Grundsätze durch die Warenidentität und die hohe Kennzeichnungskraft der bekannten Widerspruchsmarke „FOCUS“ ausgeglichen.

4. Die schriftbildliche und klangliche Zeichenähnlichkeit der Marken „FOCUS“ und „LASER FOCUS“ leitet sich aus der Tatsache ab, dass die Widerspruchsmarke „FOCUS“ so bekannt und unterscheidungskräftig ist, dass die Verkehrskreise auch in der angegriffenen Marke „LASER FOCUS“ den Bestandteil „FOCUS“ als das kennzeichenprägende Element beurteilen werden.

Englische Leitsätze:

1. With regard to “magazines” there exists a likelihood of confusion in the sense of art. 8 (1) b) CTMR between the earlier trademark “FOCUS” and the younger trademark “LASER FOCUS”. As it is common within the media sector to market further products under sub-brands the public will assume that the magazines titled with the younger trademark “LASER FOCUS” are extensions of the famous magazine “FOCUS” of the opponent.

2. According to the principal of the interdependence of the various factors there may be a likelihood of confusion notwithstanding a lesser degree of similarity between the relevant trademarks where there is a higher degree of similarity between the relevant goods and services and where the earlier mark is highly distinctive because of the reputation it enjoys with the public.

3. The lower degree of similarity between the trademarks “FOCUS” and “LASER FOCUS” will accordingly be compensated because of the identity of the products and the high distinction of the opposing trademark “FOCUS” which enjoys reputation for “journals” and “magazines” in Germany.

4. The trademarks “FOCUS” and “LASER FOCUS” are visually and aurally similar as the opposing trademark “FOCUS” is so well-known and distinctive in Germany that the German public will perceive “FOCUS” as the dominant element of the younger trademark “LASER FOCUS”.

Entscheidungsgründe

Decision

Summary of the facts and procedure

1 By application filed on 26 January 2000, ... ('the applicant') sought to register the word mark below for the goods listed thereafter. The application was published in the Community Trade Marks Bulletin No 71/2000 of 4 September 2000.

LASER FOCUS

Class 16 - Magazines.

2 On 28 November 2000, ...('the opponent') filed a notice of opposition against registration of the mark applied for on grounds of the likelihood of confusion and the unfair advantage that would be taken of the distinctive character and repute of the earlier mark within the meaning of Article 8(1)(b) and (5) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark ('CTMR') (OJ EC 1994 No L J 1, p. 1; OJ OHIM 1/95, p. 52). The opposition. was based on the word mark below protected in Germany by Registration No 394 07 564 filed on 19 December 1994 and registered on 23 May 1996 and enjoying reputation there. Referring to market surveys conducted in 1994 and 1997, the opponent claimed that the earlier mark was known by 88% of the average German public particularly in connection with the title of a journal or news magazine, television programmes and advertising and media coverage. It referred, furthermore, to its twelve German registrations of marks containing the word 'FOCUS' and claimed that, in the circumstances, the average German consumer was likely to consider the mark applied for a part of its family of marks containing that word.

FOCUS

3 The opposition was directed at all the goods in the application and was based on all the goods covered by the earlier registration covering a range of goods and services in Classes 3, 5, 6, 7, 8, 9, 14, 15, 16, 18, 20, 21, 24, 25, 26, 28, 29, 30, 33, 34, 36, 38, 39, 41 and 42 including, in particular:

Publications, newspapers and magazines.

4 Furthermore, on 16 August 2001, the opponent, referring to another market survey, claimed that the earlier mark 'FOCUS' was known by 98,1 % of the relevant public in 2001. 1t argued that, according to the later survey, there was also a likelihood of confusion between the earlier mark FOCUS and the magazine title 'Im Focus Onkologie' even amongst professional physicians. The evidence on that survey was not translated into the procedural language.

5 By Decision No 443/2004 of 25 February 2004 ('the contested decision'), the Opposition Division rejected the opposition, finding that the visual, aural and conceptual differences between the marks ruled out any risk of confusion despite the identity of the goods in Class 16. Accordingly, it found that it was not necessary to examine whether the earlier mark enjoyed reputation in the context of Artic1e 8(1)(b) and (5) CTMR.

6 On 21 April 2004, the opponent filed an appeal against the contested decision together with the statement setting out the grounds of the appeal.

7 The appeal was forwarded to the Opposition Division for interlocutory revision on 29 April 2004 pursuant to Article 60a CTMR as amended by Council Regulation (EC) No 422/2004 of and was remitted to the Board on 4 May 2004.

8 The applicant, who was notified of the grounds of the appeal on 13 July 2004, replied with observations on 8 September 2004.

9 The opponent, which was merely provided a copy of the applicant's observations by the Registry of the Boards of Appeal, presented further arguments on 27 September 2004, contesting the applicant's observations as to the distinctive character of 'FOCUS' .

Submissions and arguments of the parties

10 The opponent contests the Opposition Division's finding of no likelihood of confusion. It argues that the application should be rejected pursuant to Artic1e 8(1)(b) and (5) CTMR for the following reasons:

• The evidence submitted to the Opposition Division and in the appeal shows that the earlier mark is well known in Germany. That evidence shows that the opponent is the owner of a series of trade marks comprising the word 'FOCUS'. For example, the opponent publishes a business magazine entitled 'FOCUS MONEY', broadcasts a weekly news programme 'FOCUS TV'; and can be accessed on the internet on its 'FOCUS ONLINE' home page. Its other activities are identified as 'FOCUS@school', 'FOCUS macht Schule', 'FOCUS night cap' and 'FOCUS FORUM: Die Erfolgsmacher'. The well-known character of the earlier mark is also demonstrated by the entry in the 1997 edition of the German Brockhaus encyclopaedia, which identifies the term 'FOCUS' with the opponent's news magazine published in Munich since 1993 with total sales in the order of one million copies. In addition, the opponent has invested more than Euros 320 million over the period 1993 to 2002 in promoting the FOCUS and FOCUS MONEY magazines in daily newspapers, professional journals, TV, radio and popular press. The breadth of its activities is such that the public, which, already identifies the term 'FOCUS' with the opponent undertaking, will also consider that the term 'LASER FOCUS' denotes a technical magazine on optical matters published by the opponent undertaking.

• Use of the mark applied for with identical products will also take unfair advantage of the distinctive character and repute of the opponent's earlier mark conveying an image of success, innovation and dynamism to the German public.

• Use of the mark applied for would also be detrimental to the distinctive character and repute of the opponent' s earlier mark insofar as the public could attribute a poor quality of the applicant' s products to the opponent.

To demonstrate the well-known character of the earlier mark, the opponent provides certain documents in the appeal- proceedings and argues that they should be taken into account in the light of the judgment of the Court of First Instance in (see judgment of the Court of First Instance of 23 September 2003 in Case T-308/01 Henkel KGaA v OHIM ('Kleencare') [2003] ECR publication pending. Those documents being:

• A copy of the relevant entry in the 1997 edition of the German Brockhaus encyclopaedia together with a translation.

• A table on promotional expenditure from 1993 to 2002.

• Various Internet extracts.

11 In addition, the opponent provided a copy of a communication of the German Patent and Trade Mark Office showing partial cancellation of the German registration No 394 07 564.1 on 8 October 2003 for certain goods and services. The goods and services listed in paragraph 3 were, however, unaffected.

12 The applicant contends that there is no evidence that the word 'FOCUS' is distinctive of the opponent undertaking. 'FOCUS' is a common word and there is no evidence that such a word in standard typeface is distinctive of products and services of the opponent undertaking. To the contrary, the evidence submitted concerns the FOCUS DAS MODERNE NACHRICHTENMAGAZIN logo mark and the sign appearing in the opponent's web site is the logo 'FOCUS' in stylised letters appearing in combination with a globe. The extracts from the Internet showing the opponent' s use of FOCUS in conjunction with other terms in combinations such as 'FOCUS NIGHT CAP', 'FOCUS FORUM' 'FOCUS TV' 'FOCUS ON UNE' do not prove use of the term 'FOCUS'. Insofar as the opponent's magazines are not scientific magazines but cover the field of news and business, the average German consumer who is used to seeing the term 'FOCUS' in the logo device, will not expect the opponent to publish a magazine in the technical or optical field and will not establish a link between the opponent when he encounters the mark applied for that reproduces in stylised letters the word 'FOCUS' in the combination 'LASER FOCUS' carrying a scientific connotation. In any case, the Internet extracts should not be admitted since they have not been translated. To the extent that there is no evidence of reputation in the word 'FOCUS' and the signs are not similar, there can be no infringement of Article 8(5) CTMR. Use of the 'FOCUS' by the applicant would not be without due cause since it is used frequently as evidenced by a search based on that term in Google producing more than' a million hits.

Reasons

13 The appeal complies with Articles 57, 58 and 59 CTMR and Rule 48 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing the CTMR (OJ EC No L 303, 15.12.1995, p. 1) (hereinafter 'CTMIR'). It is therefore admissible.

14 Article 8 CTMR headed 'Relative grounds for refusal' provides in material part:

'1. 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.'

15 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 within the meaning of that article (see, to that effect, judgment of the Court of 11 November 1997 in Case C-251195 Sabel BV v Puma AG, Rudolf Dassler Sport ('Sabel') [1997] ECR 1-6191, at paragraphs 16 to 18; judgment of the Court of29 September 1998 in Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer, Inc., formerly Pathe Communications Corporation ('Canon') [1998] ECR 1-5507, at paragraph 30).

16 The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see judgment of the Court of 22 June 1999 in Case C-342/97 Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV ('Lloyd Schuhfabrik') [1999] ECR 1-3819, at paragraph 18; Sabel, at paragraph 22).

17 A global assessment of the 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 these goods or services may be offset by a greater degree of similarity between the marks, and vice versa. The interdependence of these factors is expressly mentioned in the seventh recital of the preamble to the CTMR (see, to that effect, Canon, paragraph 17).

18 In the present case, having regard to the goods and services in the application, which are of interest to a broad cross section of the public, and given that the earlier mark is protected in Germany, it is appropriate to consider that the relevant public consists of the average consumer in that Member State.

19 As is apparent from the seventh recital in the preamble to the CTMR, the reputation of a mark is a factor which must be taken into account when determining whether the similarity between the signs or between the goods or services is sufficient to give rise to a likelihood of confusion (Canon, paragraphs 18 and 24, on the interpretation of First 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 judgment of the Court of First Instance of22 October 2003 in Case T-311/01 Les Editions Albert Rene v OHIM ('Starix') [2003] ECR publication pending, at paragraph 61).

20 In the present case, it is clear from the grounds of the opposition that the opponent invoked reputation both within the context of Article 8(1)(b) and (5) CTMR. Insofar as the Opposition Division carried out an assessment of the similarity of the marks in abstract, it clearly failed to take ac count of the issue of whether the reputation in the earlier mark was such that the similarity between the signs was sufficient to give rise to a likelihood of confusion.

Comparison of the marks

21 The assessment of the similarity of the marks requires a global appreciation of their visual, aural and conceptual similarity, based on the overall impression they give, bearing in mind their distinctive and dominant components (see, to that effect, Sabel, paragraph 23).

22 In addition, it is necessary to evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed (see, to that effect, Lloyd Schuhfabrik, paragraph 27).

Distinctive character

23 The more distinctive the earlier mark either per se or because of the reputation it enjoys with the public, the greater will be the likelihood of confusion since such marks enjoy broader protection than those with less distinctive character components (see Sabel, paragraph 24; Canon paragraph 18).

24 The study carried out by the Empirical Legal Research Department of Infratest Burke GmbH & Co, conducted in the second half of January 1997, submitted in the proceedings before the Opposition Division, shows that 70% of the 88% interviewed who had read, heard or were in some way familiar with the designation 'FOCUS' (namely, 62% of the population interviewed), who were shown a card with the word 'FOCUS' in standard typeface, made a spontaneous connection with the title of a journal or news magazine. The corresponding percentage for 1994 was 56% of 74%, that is 41 %. Subsequently, when the interviewees were asked to choose between whether the term 'FOCUS' designated A. Something that has to do with a camera; B. As a term of optics; C. As the title of a journal; D. For focal point, the vast majority (87% in 1997 and 73% in 1994) replied that it designated the title of a journal, whereas only 2i1 in 1997 and 4% in 1994 identified it as a term of optics. It follows that it cannot be accepted, as the applicant contends, that there is no evidence of the reputation in the term 'FOCUS' in connection with magazines and that the evidence only covers figurative marks different from the mark applied for. It is clear that a substantial part of the German public will identify the term 'FOCUS' with the opponent's journals and magazines, and that the earlier mark 'FOCUS' is highly distinctive because of the reputation it enjoys with the German public.

25 Moreover, there is no particular reason why that survey, the validity of which has not been questioned by the applicant, should not be taken into account since the evidence includes a description of the sampling methodology and the interviewees were representative of the average German public by gender, age and geographical location.

26 In the circumstances, since it has enhanced distinctive character, the term 'FOCUS' can properly be considered the dominant element in the comparison of the marks. Given the fact that the earlier mark enjoys reputation in Germany for journals and news magazines, the overall impression created in the mind of the relevant public by the mark applied for, consisting of the combination of the words 'LASER FOCUS', will be dominated by the component 'FOCUS'. The German public will view the identical term 'FOCUS' as the essential element and thereby make a powerful link between the marks.

Visual comparison

27 Consequently, there is certainly a degree of visual similarity to the extent that the mark applied for includes the term 'FOCUS'. ,That comparison of the dominant verbal component of the word mark with the earlier mark claimed reveals a visual similarity between them. The difference arising from the addition of the word 'LASER' in the mark applied for is not significant enough to eliminate entirely the similarity created by the fact that the essential part, the term 'FOCUS', is identical.

Aural comparison

28 Phonetically, there is a certain degree of similarity to the extent that it is unlikely that the average consumer will not refer to the publications and magazines in the mark applied for as simply 'LASER'. In addition, in the light of the considerations set out above concerning the similarity of the dominant component of the mark applied for to the earlier mark, the two signs are in fact aurally similar. The fact that the entire sign comprising the earlier mark is incorporated in the dominant component of the sign in respect of which registration is applied for justifies the conclusion that there is aural similarity between the signs.

Conceptual comparison

29 Conceptually, the earlier mark alludes to the general notion that attention is directed to the subjects treated and will not direct the attention of the public to any particular subject. However, when the terms comprising the mark applied for are viewed as the title of a magazine, the reader will be informed that the content focuses on laser technology. If, instead, the subject matter is otherwise, the mark applied for will at most constitute an allusive reference to attention that is intense, directed and concentrated. There is thus a subtle conceptual difference between the signs in conflict.

30 In conclusion, the overall impression is that the marks are visually and phonetically similar. The subtle conceptual difference and the visual and aural differences produced by the additional term 'LASER' in the mark applied for will not eliminate the overall impression of visual and phonetic similarity, since it is established that the German public will view the identical term 'FOCDS' as the essential element and thereby make a powerful link between the marks.

Comparison o[ the goods

31 Article 8(1)(b) CTMR provides that the likelihood of confusion presupposes that the goods or services covered are identical or similar (see, to that effect, Canon paragraph 22).

32 The arguments advanced by the applicant relating to the different fields in which the goods in question are offered are irrelevant. In the absence of an express restriction within the meaning of Article 44(1) CTMR, contemplated use in a particular sector on a particular market. of a trade mark for which registration is sought cannot be taken into account. In the present case, the designation of the goods covered by the application for a trade mark in Class 16 does not support the conclusion that they concern magazines in the technical or optical field exclusively. The relevant comparison must be between the list of goods covered by the application and the list of goods for which the earlier mark enjoys reputation. It does not follow that the nature of the information covered by the magazines in the application will be different from that of the magazines and publications in respect of which the earlier mark enjoys reputation. Consequently, since 'Magazines' in the application are broadly specified and the earlier mark also covers 'magazines " the goods in question are identical.

Likelihood of confusion

33 A global assessment of the 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 these goods or services may be offset by a greater degree of similarity between the marks, and vice versa. The interdependence of these factors is expressly mentioned in the seventh recital of the preamble to the CTMR (see, to that effect, Canon, paragraph 17).

34 The distinctive character of the earlier trade mark either per se or because of the reputation it enjoys with the public must be taken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to the likelihood of confusion (see Canon paragraph 24).

35 It is also appropriate to examine the objective conditions under which the marks may be in opposition on the market. It is common in the field of dissemination of information for the same mark to be configured in various different ways according to the type of product it designates. Thus, for example, the opponent is able to exploit the 'FOCUS' brand along with other publications, such as 'FOCUS MONEY' and activities such as 'FOCUS TV'. It is common for an undertaking to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various lines from one another. In such circumstances it is conceivable that the relevant public may regard magazines designated by the conflicting marks as belonging, admittedly, to two distinct ranges of products but as coming, none the less, from the same undertaking (see, to this effect, judgment of the Court of First Instance of23 October 2002 in Case T-I04/01 Claudia Oberhauser v OHIM ('Fifties') [2002] ECR II-4359, at paragraph 49). Accordingly, the logical conclusion must be that the average consumer might believe that the products designated by the mark LASER FOCUS formed part of a new range of products and are marketed by the proprietor of the FOCUS trade mark, enjoying reputation in Germany for journals and magazines, or by an economically-linked undertaking.

36 Application of the principle of the interdependence of the various factors confirms that conclusion. There may be a likelihood of confusion, notwithstanding a lesser degree of similarity between the trade marks, where the goods or services covered by them are identical and the earlier mark is highly distinctive because of the reputation it enjoys with the public (see Lloyd Schuhfabrik Meyer, paragraph 21). In this case, as has already been found, the goods in the application are identical to 'magazines' for which the earlier mark enjoys reputation, and there is sufficient evidence that the earlier mark enjoys reputation in Germany for journals and magazines. As a consequence, the differences between the marks in question based on the presence of the term 'LASER' are attenuated in the global assessment of the likelihood of confusion.

37 For the foregoing reasons, the contested decision must be set aside.

38 It follows that it is not necessary to examine either the opposition based on Artic1e 8(5) CTMR or the remainder of the arguments and contentions as to the admissibility of documents submitted for the first time in the appeal proceedings.

Costs

39 Since the applicant is the losing party within the meaning of Artic1e 81(1) CTMR, it must be ordered to bear the fees and costs.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision.

2. Upholds the opposition.

3. Rejects the application in its entirety.

4. Orders the applicant to bear the fees and costs of the opponent, both in the opposition and appeal proceedings.