Urteile

Hinweise zum Erfordernis: Nutzung einer Marke

Leitsatz des Gerichts

1. Die Verweisung seitens der Anmelderin auf ein Parallelverfahren, in welchem die Widersprechende von der Anmelderin zum Nachweis der Benutzung aufgefordert worden ist, reicht nicht aus, um den Nichtbenutzungseinwand rechtswirksam zu erheben.

2. Solange der Nichtbenutzungseinwand entweder nicht erhoben oder noch nicht zulässig ist oder solange berechtigte Gründe im Sinne von Art. 15 Abs. 1 GMV für die Nichtbenutzung vorliegen, ist für die Prüfung der Verwechslungsgefahr auf die Waren und Dienstleistungen, wie diese sich im Register bei der Widerspruchsmarke wieder finden, abzustellen, ohne dass es auf deren tatsächliche Benutzung ankäme.

3. Ein großer Registerbestand an ähnlichen oder identischen Marken vermag die Annahme einer Verringerung der Kennzeichnungskraft der älteren Marke nicht zu begründen, weil von der Existenz einer Registermarke nicht zwangsläufig auf deren Verwendung zu schließen ist.

4. Die jüngere Marke „FOCUS“ ist mit der zeichenidentischen Widerspruchsmarke für die Waren

   Geräte zur Aufzeichnung, Übertragung und Wiedergabe von Ton und Bild sowie Zubehör hierfür; Waren aus Papier und Pappe; Buchbindeartikel; Bilder und Fotografien sowie Bilderrahmen und Teile für Fotografien und Bücher und Alben“

   einerseits und

   „Produktion von Ton- und Bildaufzeichnungen auf Ton und Bildträgern; Übertragung von Signalen; Magnetdatenträger; Lautsprecher; elektronische Verstärkung; Fotografien; Druckereierzeugnisse; Poster, Aufkleber und Kalender“

   andererseits verwechslungsfähig im Sinne von Art. 8 Abs. 1 b GMV.

Tatbestand

On 23/09/1999 the applicant filed application No 1 318 997 to register the word mark FOCUS in classes 9, 16 and 20.

After a limitation of the list of goods and services declared by the applicant in then course of the opposition proceedings, the goods and services covered by the application against which the opposition is directed are:

• Apparatus for recording, transmission and reproduction of sound or images and accessories hereto in class 9

• Pictures and photographs and holders here fore; albums for pictures and photographs devices for mounting, keeping and storing pictures and photographs; all of the aforementioned goods made out of paper; none of the afore-mentioned goods relating to magazines in class 16

• Picture frames in class 20

The opposition is based on the following earlier rights:

• German trade mark registration No 39 546 204 of the word mark FOCUS registered for goods/services in various classes. The opponent bases his opposition on all these goods/services.

• German trade mark registration No 39 407 564 of the word mark FOCUS registered for goods/services in various classes. The opponent bases his opposition on all these goods/services.

The grounds of the opposition are those laid down in Article 8(1)(b) and 8(5) of the Community Trade Mark Regulation (CTMR).

Both parties filed observations and evidence within the time limits set by the Office.

The opponent argues that there is a likelihood of confusion because of the identity of the marks and because the goods covered by the marks are identical or similar. Furthermore, the opponent argues that it owns a family of trademarks in Germany and that the title FOCUS enjoys reputation in Germany. The opponent also argues that in so far as the similarity of the goods and services registered for the conflicting trademarks would be denied, the rejection has to be founded on Article 8(5) CTMR.

The opponent provided the Office with a list of the amended specification of goods and services covered by the earlier trademarks DE 39 546 204 and DE 39 407 564 following the closure of the opposition proceedings against these trademarks.

The applicant argues that the opponent's trademarks are less distinctive and therefore must tolerate coexistence to a larger extent with similar marks in identical classes. Moreover, the applicant claims that the opponent has proved use of a valid right to FOCUS for "magazines" in Germany and that since magazines are clearly dissimilar to the relevant list of goods in the applicant's mark, risk of confusion can not exist.

Entscheidungsgründe

A. ON THE SUBSTANCE

1. Preliminary remarks

The applicant argues that the opponent has proved use of a valid right to FOCUS for "magazines" in Germany and that since magazines are clearly dissimilar to the relevant list of goods in the applicant's mark, risk of confusion can not exist.

The Office would note that the applicant has not requested the opponent to file evidence of use of its earlier trade marks in these proceedings. The sole reference to other proceedings concerning opposition against a different CTM application owned by the applicant (contained in the applicant's letter dated 8/9/2005) can not be deemed to be the proof of use request made within the present opposition proceedings.

In a situation where proof of use of the earlier mark is not, or may not be, requested, or where there are proper reasons for non-use, the comparison of goods/services cannot take into consideration the actual use of the opposing mark(s). Therefore, in the present case, comparison has to be made between goods and services as registered.

Furthermore, the applicant claims that from a general trademark perspective, the word FOCUS is a more commonly registered mark and that numerous marks containing the element FOCUS are registered in different classes. Hence, the opponent's mark is a less distinctive mark that must tolerate the co-existence to larger extent with similar marks in identical classes. The applicant has not brought forward any evidence in support of such an argument.

The Office considers that this argument is immaterial to these proceedings. This is because the existence of trade marks in the register does not necessarily imply that these are trade marks with a presence in the market, i.e. that they are currently being used and that there is no likelihood of confusion. Neither does it imply that such marks are less distinctive.

Coexistence of registrations does not necessarily reflect the market situation. Even coexistence in the market does not necessarily exclude likelihood of confusion. There are many reasons as to why undertakings may accept coexistence between trade marks in some markets. These reasons have no impact on how the consumers perceive this situation and make their decisions. There is a difference between a decision of a trade mark authority explicitly stating there is no likelihood of confusion between two trade marks and the mere acceptance of a trade mark for registration.

Furthermore, in support of its claims, the opponent puts forward a decision of the First Board of Appeal. The Court of First Instance has ruled in this respect that the Community trade mark system is autonomous and that the legality of decisions of the Boards of Appeal is to be assessed purely by reference to Regulation No 40/94, and not the Office's practice in earlier decisions (see judgments In Cases T-130/01, Sykes Enterprises, Incorp., v OHIM, of 5 December 2002, paragraph 31; T-122/99 Procter & Gamble v OHIM (soap bar shape) [2000] ECR II-265, paragraphs 60 and 61; T-32/00 Messe München v OHIM (electronica) [2000] ECR II-3829, paragraph 47; and T¬-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 66). Accordingly, the Office is bound neither by national registrations nor by its own previous decisions. In any case, the Office would note that the decision mentioned by the opponent does not concern the same trade marks and the same specifications as those of the present proceedings.

2. Likelihood of confusion

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.

a) Comparison of goods and services

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 are 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 contested goods are the following:

• Apparatus for recording, transmission and reproduction of sound or images and accessories hereto in class 9

• Pictures and photographs and holders here fore; albums for pictures and photographs devices for mounting, keeping end storing pictures and photographs; all of the aforementioned goods made out of paper; none of the afore-mentioned goods relating to magazines in class 16

• Picture frames in class 20

The opposition is based on the following goods and services:

DE 39 407 564

• Services of an editor; production of sound and image recordings on sound and image carriers; organization and distribution of radio and television programs; organizations of events of a cultural, scientific, sports and also political nature, as well as mediation of tickets for events, mediation of travels, of accommodation including hotels, also of rent-a-car services; soap; perfumeries; essential oils, soap, make-up, cosmetic products, hair tonic, body care and beauty products; aftershave lotion and cream, deodorant; toilet articles namely toilet paper, cleaning agents and toothpaste; dental care/hygiene; pharmaceutical products as well as health care and personal hygiene products; dietary products on the basis of vitamins, of protein and/or on the basis of carbohydrates as food products for supplementary or nutrition¬-reduced, calorie-controlled nutrition, as supplementary food products for sports, supplementary and also stimulating products containing vitamins, minerals and trace elements or similar products; goods from non-precious metals, in so far as these are contained in class 6; signs of metal and/or plastic, badges, fashion accessories, namely buckles, lacks resp. fasteners of metal or plastic; motor-driven tools as craftsmen and hobby tools; cutlery, forks, spoons, hand-operated tools and devices; transmission of signals; magnetic recording carriers; loudspeakers, electronic amplifiers; precious metals and their alloys; jewellery; gems; watches and other chronometers; fashion jewellery; cuff links; tie pins; broaches; badges; earrings; jewellery objects (in so tar is these are contained in class 14); ashtrays; music instruments; publications, newspapers and magazines, books, posters, stickers, calendars, photographs, stationery; bonding agents (for paper and stationery), typewriters and office articles, namely non-electric office equipment, writing utensils, ballpoint pens, fountain pens; educational and training means also in the form of models and audiovisual signs; leather belts; small hand-operated devices and containers for households and kitchen (not of precious metal); brushes; glassware, porcelain and stoneware (in so far as contained in class 21); woven and knitted fabric; bed linen and table cloths; textiles, in so far as contained in class 24; towels, toweling textiles (in so far as contained in class 25), toys, namely toy cars, model cars, games, computer games, beer; fruit drinks; mineral water and carbonated water and other soft drinks; drinks containing milk; spirits; raw tobacco and tobacco products; smokers' articles, namely cigar cutters, cigarette and cigar tips, matches, fighters; and accommodation of and catering for guests; operation of gymnastic and fitness centers and leisure time parks as well as casinos; operation of fan clubs.

DE 39 546 204

• video cassettes, all afore-mentioned goods with the exception in the field of photogrammetry; printed matter; information material in the form of printed matter, namely printed material, newspapers and magazines, books, posters, stickers, calendars, photographs; mediation and renting of broadcasting time against payment for others, professional consulting services (with the exception of management consulting) on the organization of broadcasting time; services of an advertising agency including mediating and implementing products of telecommunications, radio and television spots, also in online service; marketing, market-research and analysis; mediating advertisements; distribution of goods for advertising purposes; public relations and related services; mediating and implementing advertising events; production sound and image recordings on sound and image carriers.

Class 9

There is at least a certain degree of similarity between the applicant's goods in class 9 and the opponent's production of sound and image recordings on sound and image carriers; transmission of signals; magnetic recording carriers, loudspeakers, electronic amplifiers, in particular because the purpose of the goods and services in dispute is the same and, as regards the opponent's magnetic recording carriers; loudspeakers, they may be complementary to the applicant's goods in question. Whether or not this will be sufficient for finding of a likelihood of confusion will depend on further factors as set out by relevant case-law.

Class 16

The applicant's photographs (all of the aforementioned goods made out of paper; none of the afore-mentioned goods relating to magazines) are included in the opponent's specification, therefore are identical thereto.
The applicant's pictures (all of the aforementioned goods made out of paper; none of the afore-mentioned goods relating to magazines) are identical or at least highly similar to the opponent's printed material, posters, stickers, calendars, photographs. Like photographs, pictures can satisfy the same consumer's needs, their nature as well as the purpose of use is similar to that of the photographs. The relevant consumers will assume that the goods come from the same undertaking.

The applicant's (...) and holders here fore; albums for pictures and photographs devices for mounting, keeping and storing pictures and photographs; all of the aforementioned goods made out of paper; none of the afore-mentioned goods relating to magazines are also similar to the opponent's photographs, in particular due to the fact than they are complementary to photographs as well as because they have identical nature.

Class 20

Picture frames covered by the CTM application are similar to the opponent's photographs, mainly because they are complementary thereto. They will be sold at the same outlets and the relevant public will easily assume that the producer of the goods at issue is the same.

b) Comparison of signs

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 (cf. 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 the following:

FOCUS
Earlier trade marks
DE 39 407 564 and DE 39 546 204

FOCUS
CTM application

The signs are identical.

c) Global assessment

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 Inc [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 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 view of the forgoing and taking into consideration that the marks are identical, the Office concludes that it is likely that apart of the relevant public in Germany could think that the identical and similar goods in dispute, bearing the respective signs, originate from the same or economically linked undertakings. Therefore there is a likelihood of confusion including likelihood of association between the CTMA and the earlier mark on the part of the public for all the contested goods. The opposition is therefore upheld in its entirety.

Since the opposition is fully successful on the basis of Article 8(1)(b) CTMR, the Office will not, for reasons of procedural economy, examine the grounds invoked by the opponent under Article 8(5) CTMR, because the result of such examination would have no impact whatsoever on the outcome of the present decision.

B. 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.

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

1. Uphold opposition number B 538 951 for all the contested goods.

2. Reject application number 1 318 997 in its entirety.

3. Order the applicant to bear the costs.

FIX THE COSTS AS FOLLOWS: ...

Rechtsgebiete