A. ON THE PROOF OF USE
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
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. , 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
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
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,  OJ OHIM No 1/98,
The signs to be compared are the following:
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
(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.
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.
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)
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
The Opposition Division
Solvar Winnie FINNANGER
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.