Urteile

FOCUS ./. FOGUS

Leitsatz des Gerichts

1. Die Marken „FOCUS“ und „FOGUS“ sind für Werkzeuge und Geräte der Klasse 7 verwechslungsfähig im Sinne von Art. 5 Abs. 1 b GMV.

2. Zubehörstücke von Waren sind zu diesen in markenrechtlicher Hinsicht ähnlich. Die Zubehörstücke und die Waren sind nämlich regelmäßig derselben Natur, haben dieselben Verwender und Vertriebswege und werden oft gemeinsam in einem Set angeboten.

3. Wenn ein gemeinschaftsrechtliche Widerspruchsverfahren auf eine deutsche Marke gestützt wird, gegen die ihrerseits ein Widerspruchsverfahren durchgeführt worden war, so beginnt die fünfjährige Benutzungsschonfrist des Art. 43 Abs. 2, Abs. 3 GMV erst mit Abschluss jenes Widerspruchsverfahrens zu laufen.

4. Der Begriff „Eintragung“ des Art. 43 Abs. 2 GMV ist so auszulegen, dass mit diesem bei einer deutschen Marke das gesamte Eintragungsverfahren inklusive des Widerspruchsverfahrens gemeint ist.

Tatbestand

On 21/03/2001 the applicant filed application No 2 140 952, to register the figurative mark "FOGUS", as reproduced on the cover page for goods in class 7.

The application was published on 18/03/2002.

The opposition is directed against all of the goods covered by the application.

The opposition is based on:

- Earlier German trade mark registration No 394 07 564 for the word mark "FOCUS", registered for various goods and services. The opponent bases its opposition only on the goods in class 7.

The grounds of the opposition are those laid down in Article 8(1)(a), (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).

Both parties filed observations and evidence within the time limits set by the Office. The applicant requested that the opponent submit proof of use of the earlier mark on which the opposition is based.

Entscheidungsgründe

The applicant has required the opponent to submit proof of use of the earlier German mark on which the opposition Is based. However, according to Article 43(2) and (3) CTMR, proof of use shall only be furnished provided the earlier mark has been registered for not less than five years at the date of publication of the contested CTM application. The latter was published on 18/03/2002. The earlier German trade mark No 394 07 564 was registered on 23/05/1996. This earlier German trade mark has not been registered for at least five years. Although the date of registration is 23/05/1996, the term "registration" is to be interpreted as "date of completion of the registration proceedings". In German national proceedings the opposition period is applied as a post registration procedure. The opponent did inform the Office on 08/04/2003 that the earlier German trade mark is involved in opposition proceedings. Against this background, it is clear that the opponent was not obliged to submit proof of use of this earlier mark.

B. ARTICLE 8(1)(a) AND (b) CTMR

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

a) 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.

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.

i) Comparison of the goods

In assessing the similarity of the goods and services, all relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their purpose and their method of use, and whether they are In competition with each other or are complementary (see Judgment of the European Court of Justice in Case C-39/97, Canon Kabushiki Kaisha v Metro Goldwyn-Mayer, Inc. [1998], OJ OHIM, No 12/98, p. 1419, paragraph 23).

Such factors may also include the end users of the goods, the kind of undertaking usually manufacturing the goods or rendering the services and the relevant distribution channels and retail outlets.

The goods to be compared are the following:

EARLIER TRADE MARK
Motor driven tool machines, in particular motor driven tools as craftsmen and hobby tools in class 7

CONTESTED CTM
Machines for joint preparation for welding; machines and equipment for welding (included in the class); machines for cross¬-cutting, milling, turning, planning and thermal spraying in class 7

The goods in the specification of the contested CTM application, which all are specified machines, are covered under the broad definition motor driven tool machines in the specification of the earlier mark. The contested CTM application also contains equipment. which would be highly similar to the motor driven tool machines covered by the earlier mark, since equipment has the same nature and end users, plus are also often sold together in a set and have the same distribution channels.

Therefore, the goods are identical or highly similar.

ii) Comparison of the signs

In comparing signs, a global appreciation of the visual, phonetic and conceptual similarity of the marks in question must be made. This appreciation 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 in Case C-251 195, Sabel BV v Puma AG, Rudolf Dassler Sport, [1997] OJ OHIM No 1/98, paragraph 23).

The signs to be compared are the following:

FOCUS
EARLIER MARK

CTM APPLICATION

The relevant territory is Germany.

Both marks contain five letters where four of them are identical. The contested CTM application is a figurative mark with a large letter "F" and above the letter "O", there is a triangle. The marks have a medium degree of visual similarity because of the four letters in common.

Phonetically both signs consist of two syllables; FO/CUS and FO/GUS. The first syllable is identical and the last syllable is similar. Therefore, for the German public there is a high degree of phonetic similarity between the marks.

Conceptually the marks do not have any meaning in German. The earlier mark "FOCUS" may be understood by apart of the relevant public for its English meaning;

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 is focused.

(According to Collins English Dictionary)

In view of the above findings, the overall impression of the marks compared is similar, despite the fact that there is no conceptual link.

iii) Overall assessment

It is evident from the above comparisons that the signs are not identical in this case. Consequently, the opposition fails under Article 8(1)(a) CTMR.

The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association which can be made with the used or registered sign, on the degree of similarity between the trade mark and the sign and between the goods or services identified. The likelihood of confusion must be therefore appreciated globally, taking into account all factors relevant to the circumstances of the case (see Sabel, paragraph 22).

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.) The earlier mark "FOCUS" does not have any meaning in German, even if the average consumer may understand the meaning of this English ward; the sign "FOCUS" has a relatively high distinctive character for the goods in question.

It should be noted that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place her/his trust in the imperfect picture of them she/he has kept in mind (see. Judgment of the Court of Justice in Case C-342197, Lloyd Schuhfabrik Mayer & Co. GmbH v. Klijsen Handel B. V., paragraph 26). The applicant points out that the goods in question are highly specialised goods and require highly skilled personnel for the handling of the goods, and that it is highly unlikely that the personnel will get the impression that the goods originate from the owner of the trade mark "FOCUS". The Office would like to point out that the relevant public for the goods in question are in a specific field which contains professionals, but part of the public in this field may also contain persons who perform welding as an activity as their pastime.

Both marks are phonetically highly similar and do have a certain degree of similarity visually. The only letters in the marks that are different are the "G" and the "C" placed in the middle in the marks and therefore not so easy to notice. The two letters "C" and "G" are visually also similar. In spite of the presentational peculiarities of the CTM application the overall impression is still that of a single ward and it is likely to be pronounced as such.

iv) Conclusion

Taking into account all the relevant factors of the case, it is concluded that, because of the high phonetic similarity and certain visual similarity and the identity or similarities between the goods there is a likelihood of confusion, on the part of the pubic in the relevant territory (Germany) between the contested goods of the CTM application and the earlier trade mark.

Hence, the opposition must be upheld under Article 8(1)(b) CTMR in its entirety.

C. OTHER GROUNDS OF OPPOSITION - ARTICLE 8(5) CTMR

In the Notice of Opposition the opponent also indicates that the opposition in based on earlier registered mark in Germany with reputation and indicated that the evidence of reputation was attached (ticked box no 73). The opponent did. not file any documents nor did it develop this ground further other than in the Notice of the Opposition within the time limit for submitting further facts and evidence. The applicant states that the grounds for Article 8 (5) CTMR were not indicated within the opposition term and therefore the opposition should be considered inadmissible insofar it is based on Article 8 (5) CTMR. Since the opposition is upheld for all the goods in respect of the earlier registration, consequently, it is not necessary for the Office to proceed further with the examination of Article 8 (5) CTMR.

D. 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) IR, 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.

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

1. Uphold opposition number B 512 808 for all the contested goods.

2. Reject application number 2 140 952 in its entirety.

3. Order the applicant to bear the costs.

FIX THE COSTS AS FOLLOWS:

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

Costs of representation EUR 300
Opposition fee EUR 350
Total amount EUR 650

Alicante, 14/12/2005
The Opposition Division

Richard THEWLIS
Solvar Winnie FINNANGER
Kate HOGAN

Under Article 58 CTMR any party adversely affected by this decision has a right to appeal against this decision. Under Article 59 CTMR 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 8 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..

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) IR 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) MS been paid.

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