FOCUS RADIO held to be confusingly similar to FOCUS MILENIUM
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In Focus Magazin Verlag GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-357/07, December 16 2008), the Court of First Instance (CFI) has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had refused to register the mark FOCUS RADIO.
Focus Magazin Verlag GmbH filed an application for the registration of the word mark FOCUS RADIO as a Community trademark for goods and services in Classes 9, 16, 35, 38, 41 and 42 of the Nice Classification.
Editorial Planeta SA opposed the application based on three Spanish registrations for the word mark FOCUS MILENIUM for goods and services in Classes 9, 16 and 41. The opposition was directed against all the goods and services designated in the application, and was based on all the goods and services covered by the earlier marks. The Opposition Division of OHIM upheld the opposition in respect of:
- the identical goods and services in Classes 9, 16 and 41; and
- the services in Classes 38 and 42, which were found to be similar to those covered by the earlier marks.
The Opposition Division concluded that there was a likelihood of confusion in respect of those goods and services. However, the opposition was rejected in respect of the services in Classes 35, 38 (with the exception of "connecting computer services to data networks") and 42 (with the exception of "consultancy in the field of computer hardware"), since those services differed from those covered by the FOCUS MILENIUM marks.
Focus Magazin appealed to the Fourth Board of Appeal. The board annulled the decision of the Opposition Division in part, holding that the opposition could be upheld only in respect of the identical goods and services, since the signs in question were similar only to a low degree. Therefore, it dismissed the opposition with regard to the services in Classes 38 and 42. It also found that some of the goods in Class 9 and some of the services in Class 41 were only similar and that, accordingly, the opposition should be dismissed in respect of those goods and services.
Focus Magazin appealed to the CFI, arguing that the respective marks were dissimilar. Focus Magazin claimed that the word ‘milenium’ was more distinctive than the words ‘focus’ and ‘radio’. Therefore, there could be no likelihood of confusion between the marks for any of the goods and services concerned. The CFI did not find that the word ‘milenium’ was more distinctive than the word ‘focus’, nor that ‘milenium’ was the dominant element of the mark FOCUS MILENIUM, since ‘focus’ had no link with the goods and services at issue. As the shared element of the marks (ie, the word ‘focus’) was placed at the beginning of both marks, it created a degree of visual and aural similarity. Moreover, as the marks as a whole had no clear meaning, there was no conceptual difference to cancel out the visual and aural similarity. Given that the marks cover identical goods and services and both signs begin with the distinctive word ‘focus’, the CFI concluded that the relevant public might be misled into believing that:
- there were some economic link between the goods and services covered by the marks at issue; and
- the marks thus came from economically linked undertakings.
Therefore, the CFI dismissed Focus Magazin's appeal, holding as follows:
“In those circumstances, it follows from all the foregoing, in particular from the fact that the relevant public keeps in mind only an imperfect picture of the marks concerned, so that their shared element, the word ‘focus’, creates a certain similarity between them, and from the interdependence of the various factors to be taken into consideration since the goods concerned are identical, that the Board of Appeal was fully entitled to find that there was a likelihood of confusion.”
In response to Focus Magazin's claim that the Board of Appeal had unreasonably expanded THOMSON LIFE (Case C-120/04), the CFI stated as follows:
“[C]ontrary to what [Focus Magazin] maintains, the Board of Appeal did not apply the case law according to which ‘A’ equals ‘A + B’ or ‘A + B’ equals ‘B’ in order to establish that ‘A + B’ equals ‘A + C’. Indeed, the Board of Appeal expressly excluded [...] Case C-120/04 concerning an opposition between the trademarks THOMSON LIFE and LIFE, and held that ‘A + B’ cannot be seen as an abbreviation or variation of ‘A + C’. It correctly stated that signs had to be compared as to the overall impression that they convey, but that the relevant public might pay more attention to the identical beginning of those signs.”
This case emphasizes that where the goods and/or services are identical, the CFI will be more inclined to find a likelihood of confusion.
Peter Gustav Olson, MAQS Law Firm, Copenhagen
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