Judgment — ECLI:EU:T:2008:581
Date: 2008-12-16
Language of the case: English
Court formation: First Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks applied for
Procedure: Action for annulment - unfounded
Origin: Germany

JUDGMENT OF THE COURT OF FIRST INSTANCE (First Chamber) 16 December 2008 (*) (Community trade mark – Opposition proceedings – Application for Community word mark FOCUS Radio – Earlier national word marks FOCUS MILENIUM – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94) In Case T‑357/07, Focus Magazin Verlag GmbH, established in Munich (Germany), represented by B. Müller, R. Schweizer and T. Schwarz, lawyers, applicant, v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent, defendant, the other party to the proceedings before the Board of Appeal of OHIM being Editorial Planeta, SA, established in Barcelona (Spain), ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 30 July 2007 (Case R 269/2005‑4) relating to opposition proceedings between Editorial Planeta, SA, and Focus Magazin Verlag GmbH, THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber), composed of V. Tiili (Rapporteur), President, F. Dehousse and I. Wiszniewska-Białecka, Judges, Registrar: K. Pocheć, Administrator, having regard to the application lodged at the Registry of the Court of First Instance on 19 September 2007, having regard to the response lodged at the Court Registry on 10 January 2008, further to the hearing on 15 October 2008, gives the following Judgment Background to the dispute 1 On 14 August 2001, the applicant, Focus Magazin Verlag GmbH, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended. 2 The trade mark in respect of which registration was sought is the word sign FOCUS Radio. 3 The goods and services in respect of which registration was applied for are in Classes 9, 16, 35, 38, 41 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following descriptions: – Class 9: ‘Computers and data-processing apparatus; memories for data processing equipment; computer software, in particular for the scanning, displaying, processing and output of multimedia data on computer networks, including the internet; machine-readable data carriers of all types containing information, and sound and image-recording carriers, in particular floppy discs, CD-ROMs, DVDs, chip cards, magnetic cards, video cassettes, compact discs and video discs; collections of information recorded on data carriers; data banks’; – Class 16: ‘Printed matter, printed materials, periodicals, newspapers, books, bookbinding material, posters, stickers, calendars, signboards and models of paper, cardboard, photographs and photographic products; paper, cardboard, stationery and office requisites (except furniture), instructional and teaching material (except apparatus), included in class 16’; – Class 35: ‘Database services, namely collating, storing, providing and updating of data and other information; e-commerce services, namely the arranging, concluding and handling of commercial transactions via online shops; advertising, including radio, print and internet advertising; advertising agency services; rental of advertising space on the internet; marketing, for others, in particular on digital networks (Webvertising), market research and analysis; distribution of samples, sales promotion; public relations; arranging advertising events’; – Class 38: ‘Radio broadcasting; telecommunications; connecting computer systems to data networks, telephone installations and telephone networks; providing information to others, broadcasting information via wireless or cable networks; online services, namely sending of messages and information of all kinds; email data services (electronic mail); internet services, namely providing of information on the internet; all included in class 38’; – Class 41: ‘Publication of printed matter, in particular newspapers, periodicals and books, and teaching and instructional material including stored sound and image information, also in electronic form; production of sound and image recordings on sound and image carriers; showing and rental of sound and image recordings; production of radio broadcasts, production of radio programmes; multimedia services, namely production of multimedia presentations; entertainment, in particular radio entertainment; conducting entertainment events, live events, training events and cultural and sporting events, included in class 41’; – Class 42: ‘Computer programming and design of computer programs (computer software); maintenance and upgrading of computer programs, and on-line updating services; research and development in the field of data processing; design, development and consultancy in the field of computer hardware, consultancy in the field of computer hardware; network operator and provider services, namely arranging and leasing access time to computer databases; creating, design and constructing of internet presentations; design, processing and maintenance of internet content; providing documentation’. 4 The application was published in Community Trade Marks Bulletin No 22/2002 of 3 March 2002. 5 On 5 June 2002, the opponent, Editorial Planeta, SA, filed a notice of opposition, under Article 42 of Regulation No 40/94, against registration of the trade mark applied for. The opposition was based on, inter alia, three Spanish registrations, Nos 2 290 016, 2 290 017 and 2 290 018, applied for on 11 February 2000, in respect of the word marks FOCUS MILENIUM, covering goods and services in, respectively, Classes 9, 16 and 41, and corresponding, for each of those classes, to the following descriptions: – Class 9: ‘Scientific, nautical, geodetic, electric, photographic, film, optic, weighing, measuring, signposting, for control (inspection), assistance (rescue) and teaching apparatus and instruments; apparatus for registration, transmission, reproduction of sound or images; magnetic registry supports, acoustic discs, automatic distributor machines and mechanisms for pre-payment machines; cash registers, calculators, equipment for processing information and computers; fire extinguishers’; – Class 16: ‘Paper, cardboard and paper and cardboard goods not included in other classes; printed matter; bookbinding goods; photographs; stationery; adhesives (glues) for stationery or house purposes; artists’ materials; paint brushes, typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packing (not included in other classes); playing cards; printer's type, printing blocks; clichés’; – Class 41: ‘Education; teaching; leisure; sport and cultural activities’. 6 The opposition was directed against all the goods and services designated in the application for a Community trade mark and was based on all the goods and services covered by the earlier marks. 7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 40/94. 8 By decision of 15 February 2005, the Opposition Division upheld the opposition in part. It considered the goods concerned in Classes 9 and 16 and the services concerned in Class 41 to be identical and that ‘connecting computer services to data networks’ in Class 38, and ‘consultancy in the field of computer hardware’ in Class 42, designated in the trade mark application, were similar to the ‘computer’ goods covered by the opposition. Having found that the marks FOCUS MILENIUM and FOCUS Radio were similar, the Opposition Division concluded that there was a likelihood of confusion in respect of those identical or similar goods and services. However, it rejected the opposition as regards the services in Class 35, the services in Class 38, with the exception of ‘connecting computer services to data networks’, and the services in Class 42, with the exception of ‘consultancy in the field of computer hardware’, finding that those services differed from the services covered by the marks FOCUS MILENIUM. 9 The trade mark applied for was also refused registration in parallel proceedings in respect of certain goods in Class 16 which do not form part of these proceedings. 10 On 9 March 2005, the applicant filed notice of appeal at OHIM, under Articles 57 to 62 of Regulation No 40/94, against the decision of the Opposition Division, in so far as it had rejected the trade mark application in part. 11 By decision of 30 July 2007 (‘the contested decision’), the Fourth Board of Appeal annulled the decision of the Opposition Division in part. It found that the opposition could be upheld only in respect of the identical goods and services, since the signs in question are only similar to a low degree. It therefore rejected the opposition as regards 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 had to be rejected also in respect of those goods and services. 12 Consequently, the goods and services in respect of which the Community trade mark application was rejected are the following: – Class 9: ‘Computers and data-processing apparatus; memories for data‑processing equipment; machine-readable data carriers of all types containing information, and sound and image‑recording carriers, in particular floppy discs, CD-ROMs, DVDs, chip cards, magnetic cards, video cassettes, compact discs and video discs; collections of information recorded on data carriers’; – Class 16: ‘Printed matter, printed materials, periodicals, newspapers, books, stickers, calendars, office requisites (except furniture), instructional and teaching material (except apparatus), included in class 16’; – Class 41: ‘Entertainment, among other radio entertainment; conducting entertainment events, live events, cultural and sporting events, included in class 41’. 13 In reply to a written question from the Court of First Instance, OHIM confirmed that the service ‘conducting training events’, in Class 41, was one of the services for which the trade mark applied for could be registered. Forms of order sought 14 The applicant claims that the Court should: – annul points 1, 3 and 4 of the operative part of the contested decision; – alter the contested decision in order to register the trade mark applied for in respect of the goods and services for which the application was rejected; – order the opponent to bear the costs of the whole opposition proceedings including this application. 15 OHIM contends that the Court should: – dismiss the application ; – order the applicant to pay the costs. 16 At the hearing the applicant withdrew its second head of claim and the Court took formal notice of that withdrawal. Law Admissibility of the applicant’s general reference to the documents it submitted before OHIM 17 The applicant makes overall reference to the content of its written submissions to OHIM dated 27 February and 22 October 2003 and to its statement setting out the grounds of appeal filed before OHIM on 25 May 2005. 18 It should be recalled in this respect that, according to settled case-law, under Article 44(1) of the Rules of Procedure of the Court of First Instance, which applies to intellectual property matters by virtue of Articles 130(1) and 132(1) of those Rules, although specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (see Joined Cases T‑350/04 to T‑352/04 Bitburger Brauerei v OHIM– Anheuser-Busch (BUD, American Bud and Anheuser Busch Bud) [2006] ECR II‑4255, paragraph 33 and case-law cited). 19 It is not for the Court to place itself in the parties’ position and seek the relevant information in the documents to which they refer (judgment of 17 April 2008 in Case T‑389/03 Dainichiseika Colour & Chemicals Mfg. v OHIM– Pelikan (Representation of a pelican), not published in the ECR, paragraph 19). Thus the application, inasmuch as it refers to the documents lodged by the applicant before OHIM, is inadmissible to the extent that the general reference it contains cannot be linked to the arguments developed in the application. Substance 20 In support of its application, the applicant relies on a single plea in law alleging breach of Article 8(1)(b) of Regulation No 40/94. 21 It submits that, given that the word ‘milenium’ is more distinctive than the words ‘focus’ and ‘radio’, the marks at issue are not similar and hence there can be no likelihood of confusion between them. 22 OHIM disputes the higher degree of distinctiveness of the word ‘milenium’ and considers that since the goods and services in question are identical, even a low degree of similarity between the signs at issue is sufficient to give rise to a likelihood of confusion on the part of the relevant public. 23 Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if because of its identity with or similarity to an 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. Moreover, Article 8(2)(a)(ii) of Regulation No 40/94 provides that ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark. 24 According to settled case-law, 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. 25 According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the case, in particular, the interdependence between the similarity of the signs and that of the goods or services (see Case T‑162/01 Laboratorios RTB v OHIM– Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and case-law cited). 26 For the purposes of that global assessment, the average consumer of the category of goods or services 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 (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26). 27 In the present case, the trade marks on which the opposition was based are national marks registered in Spain. The relevant territory for analysing the likelihood of confusion is therefore Spain. 28 Given the nature of the goods and services concerned, described in paragraphs 5 and 12 above, the relevant public consists of average consumers who are reasonably well informed and reasonably observant and circumspect. Although it is true that the goods covered by the trade marks at issue are in part closely linked to computers and data processing, and are aimed at a public which has a more or less detailed knowledge of computers and is familiar with the use of electronic equipment, the fact remains that, at the present time, the supply and consumption of such goods and their distribution among a wide public are such that they cannot be regarded as confined to a restricted and specialised circle of consumers, even though they cannot all be defined as mass consumer goods. Similarly, although it is true that some of the goods and services concerned are likely, given their degree of sophistication and their cost, to be the subject of a more careful purchasing decision, that is not the case with all the goods in question (see, to that effect, Case T‑352/02 Creative Technology v OHIM – Vila Ortiz (PC WORKS) [2005] ECR II‑1745, paragraphs 24 and 25, and the judgment of 22 May 2008 in Case T‑205/06 NewSoft Technology v OHIM – Soft (Presto! Bizcard Reader), not published in the ECR, paragraph 35). 29 As regards comparison of the goods and services in question, it should be noted that the goods and services for which the trade mark application has been rejected and which form the subject‑matter of the present proceedings can be described as identical with the goods and services covered by the earlier trade marks, and this is moreover expressly recognised by the applicant. Thus, there is no need to consider further whether the goods and services concerned are identical. Comparison of the signs at issue 30 As is clear from settled case-law, the global assessment of the likelihood of confusion must, as far as concerns the visual, aural or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components (see Case T‑292/01 Phillips‑Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47 and case-law cited). 31 The applicant claims that the signs at issue are not similar, contrary to OHIM’s contention. 32 The signs at issue are the following: Earlier trade marks Trade mark applied for FOCUS MILENIUM FOCUS Radio 33 They are word signs, each of which is made up of two elements, the first of which, the word ‘focus’, is identical. That word is followed by the word ‘milenium’ for the earlier marks and by the word ‘radio’ for the trade mark applied for. 34 As regards the earlier sign FOCUS MILENIUM, it should be noted that, contrary to what the applicant contends, the word ‘milenium’ is not more distinctive than the word ‘focus’. As the Board of Appeal rightly found, even though the word ‘focus’ will be understood by average Spanish consumers as corresponding to the Spanish word ‘foco’, this does not mean that it has little distinctive character for the goods and services in question. Thus, for the goods and services that are the subject of these proceedings the word ‘focus’ has an average degree of inherent distinctiveness, since it cannot be seen how these goods or services can be ‘focused’, as the Board of Appeal rightly held. 35 As regards the word ‘milenium’, the lack of the second ‘l’ in this word will not be perceived by the Spanish public as denoting a fanciful term, but rather as the natural way of spelling ‘millennium’ in Spanish, if the word is to be pronounced correctly. Thus, both because of the widespread international use of the word ‘millennium’ and because of its quasi-identity with the Spanish word ‘milenio’, the word ‘milenium’ will be perceived by that public as denoting a period of 1 000 years and not as an invented term without any particular meaning. Besides, although the word was fashionable in the year 2000, it remains allusive to certain characteristics of a given product or service, which may slightly reduce its distinctiveness. Indeed, as OHIM rightly held, words relating to time are often coupled with brand names, or used as standard advertising terminology, in order to indicate a product range with special attributes such as ‘top range products’ or ‘a classic edition’, or to suggest qualities such as timelessness and durability. 36 In those circumstances, the word ‘milenium’ cannot be regarded as the dominant element in relation to the word ‘focus’ in the earlier trade marks, since ‘focus’ has no link with the goods and services concerned. Indeed, being placed at the beginning of the sign at issue the word ‘focus’ is likely to have a greater impact than the rest of the sign (see, to that effect, Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraphs 64 and 65, and Case T‑288/03 TeleTech Holdings v OHIM – Teletech International (TELETECH GLOBAL VENTURES) [2005] ECR II‑1767, paragraph 84). 37 As regards the trade mark applied for, FOCUS Radio, it should be noted that the word ‘radio’ has no more importance than the word ‘focus’, which has no connection with the goods and services concerned. Indeed, as the applicant accepts, the word ‘radio’ has little distinctive character with regard to certain services. It may have a connection with some of the goods and services in question, such as computers on which it is possible to listen to the radio and other goods in Class 9, printed matter which may include radio programmes and other goods in Class 16, and also radio entertainment in Class 41. Thus, since the word ‘focus’ is also placed at the beginning of the mark applied for it is likely to have greater impact than the word ‘radio’. 38 In those circumstances, since the shared element of the trade marks at issue, the word ‘focus’, is placed at the beginning of those marks it creates a degree of visual and aural similarity between them, when each mark is taken as a whole, as the Board of Appeal rightly held in the contested decision. 39 The Board of Appeal also rightly held that the marks at issue, taken as a whole, had no clear meaning. Hence, there is no conceptual difference to cancel out that visual and aural similarity. 40 Also, contrary to what the applicant 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, in particular, Case C‑120/04 Medion [2005] ECR I‑8551, concerning opposition between the trade marks 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 they convey, but the relevant public might pay more attention to the identical beginning of those signs. 41 The Board of Appeal was therefore fully entitled to hold that there was a certain visual and aural similarity between the marks at issue. It is now necessary to make a global assessment of whether a likelihood of confusion exists between them. The likelihood of confusion 42 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 low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17). 43 The Board of Appeal upheld the opposition in respect of the identical goods and services, finding that the fact that both signs begin with the distinctive word ‘focus’ may lead the relevant public to believe that there are some economic links between the goods or services covered by the trade marks at issue, and that they therefore come from economically-linked undertakings. 44 The applicant submits that since the signs at issue are not similar there can be no likelihood of confusion. 45 However, it has already been found above that there is a certain visual and aural similarity between the marks at issue. It should also be noted that the goods and services at issue are identical. 46 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. 47 It follows from all the foregoing that the application must be dismissed. Costs 48 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by OHIM. 49 In those circumstances there is no need to rule on the applicant’s claim that the opponent should pay the costs or the claim in relation to the costs incurred before the Opposition Division. On those grounds, THE COURT OF FIRST INSTANCE (First Chamber) hereby: 1. Dismisses the action; 2. Orders Focus Magazin Verlag GmbH to pay the costs. Tiili Dehousse Wiszniewska-Białecka Delivered in open court in Luxembourg on 16 December 2008. [Signatures] * Language of the case: English.