I. FACTS AND PROCEDURE
On 05/03/2003 the applicant filed application No 3 085 263 to register the trade mark shown on the cover page for goods and services in classes 25 and 35.
The opposition is directed against all of the goods covered by the contested trade mark.
The opposition is based on Community trade mark registration No 453 720 of the trade mark shown on the cover page, filed on 17/01/1997 and registered on 26/08/2008 for goods and services in classes 3, 6, 7, 9, 14, 16, 21,25, 28, 29, 32, 33, 35, 38, 39, 41 and 42. The opponent claims that its mark has a reputation in Germany for all the goods and services claimed by the earlier mark.
The opposition is based on all of the goods and services covered by the earlier mark.
The grounds of the opposition are those laid down in Articles 8(1)(b) and 8(5) of the Community Trade Mark Regulation (CTMR).
The opponent argues that there is a likelihood of confusion because of the similarity of the marks and because the goods covered by the marks are identical. It also claims, among others, that its earlier registered mark has a reputation. For that reason, the contested application will cause detriment to the distinctiveness and reputation of the earlier sign.
The applicant did not submit any arguments in response.
1. Likelihood of Confusion - Article 8(1)(b) CTMR
a) Comparison of the goods
In assessing the similarity of the goods concerned, all the relevant factors relating to these goods should be taken into account. These factors include, inter alia, their nature, their purpose of use and their method of use and whether they are in competition with each other or are complementary (see Judgment of the Court of Justice, Case C-39/97, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. ('Canon')  OJ OHIM 12/98, P 1419, paragraph 23).
Further factors include the purpose of the goods and services, whether or not they may be expected to be manufactured, marketed or provided by the same undertaking, or by economically linked undertakings, as well as their distribution channels and sales outlets.
The goods on which the opposition is based are the following (among others):
Class 25: Clothing, including boots and shoes; headgear, sun visors being clothing accessories, bands for head and body; knitwear, T-shirts, bath robes, jeans, stockings, sportswear, footwear for sports; belts of leather and straps.
The contested goods are the following:
Class 25: Athletic footwear; athletic shoes; boots; footwear; insoles; overshoes; sandals, shoes, ski boots; slippers; sneakers.
Contested goods in class 25:
Athletic footwear; athletic shoes; boots; footwear; insoles; overshoes; sandals, shoes, ski boots; slippers; sneakers of the contested application are included in the general term of shoes of the earlier trade mark. Consequently, these goods are identical.
b) Comparison of the signs
The signs to be compared are the following:
Earlier trade mark
Contested trade mark
The relevant territory is the European Union.
Visually, the marks coincide in the term "FOCUS" and differ mainly in the additional logo in form of a roof or even as a leaned strongly stylized letter "F" above the main element "FOCUS" in the contested trade mark. The contested trade mark also contains the word "original" written under the main element and in a reduced size. Since the earlier trade mark is a word mark, the writing of the common element "FOCUS" of the contested trade mark is very slightly stylised. In the case of the contested trade mark the word "FOCUS' is clear1y visible and constitutes the main word element of the sign.
Bearing in mind the foregoing and especially the fact that the coincidences are in the dominant elements, the Office considers that there is a high degree of visual similarity.
Aurally, the ear1ier sign is pronounced as "fo-cus" and the contested mark as "fo-cus-o-ri-gi-nal" .
The signs coincide in their first and second syllables and differ in the four last syllables of the contested trade mark. Furthermore, the accent is on the identical starting syllables, which constitute the whole earlier mark. Consequently, the rhythm and the intonation are identical for this part of the word elements of the contested trade mark.
Bearing in mind the foregoing and especially the fact that the earlier mark is fully included in the contested trade mark, the Office considers that there is a high degree of aural similarity.
Conceptually, "FOCUS" is an English word with the following meanings: (1 a) a point at which rays (as of light, heat, or sound) converge or from which they diverge or appear to diverge; specifically: the point where the geometrical fines or their prolongations conforming to the rays diverging from or converging toward another point intersect and give rise to an image after reflection by a mirror or refraction by a lens or optical system, (b) a point of convergence of a beam of particles (as electrons); (2 a) focal length, (b) adjustment tor distinct vision; also: the area that may be seen distinctly or resolved into a clear image, (e) a state or condition permitting clear perception or understanding, (d) direction; (3) one of the fixed points that with the corresponding directrix defines a conic section; (4) a localized area of disease or the chief site of a generalized disease or infection; (5 a) a center of activity, attraction, or attention, (b) a point of concentration; (6) the place of origin of an earthquake or moonquake; (7) directed attention (See http://www.merriam-webster.com/dictionary/focus). The word "FOCUS" will be widely understood by a large part of the non-English speakers also, because in other European languages equivalent words exist which stem from the same Latin root, for example "Fokus" in German or "foco" in Spanish. The word "ORIGINAL", on the other hand, which means (1) that from which a copy, reproduction, or translation is made; (2) a work composed firsthand in this context (See http://www.merriam-webster.com/dictionarv/original), have also an understandable meaning in most of the relevant languages of the European Community because of identical (Spanish, German) or similar translation (Italian, Romanian). Considering the foregoing the signs are conceptually highly similar to the extent they share the same word element "FOCUS".
It follows from the above that the signs are similar to a certain degree.
c) Global assessment
According to the case-law of the Court of Justice, 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. (see Judgment of the Court of Justice, Case C-251/95, Sabèl BV v Puma AG, Rudolf Dassler Sport ('Sabèl')  OJ OHIM 1/98, p. 91, paragraph 22 et seq.)
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 Judgment of the European Court of Justice, Case C-39/97 Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc. ('Canon') , OJ OHIM, No 12/98, p. 1419, 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 (see Judgment of the Court of Justice Case C-342/97, Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV ('Lloyd'), OJ OHIM No 12/1999, p. 1585, paragraph 26).
The goods have been found to be identical and they are offered to the public at large.
In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken of all relevant factors and, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered (see Lloyd, paragraph 28 et seq.).
As to the distinctive character of the earlier mark, the opponent explicitly claims in its correspondence that its mark is particularly distinctive by virtue of intensive use or reputation. However the likelihood of confusion is already rendered by a normal distinctiveness of the earlier sign. Therefore, for procedural economy, the assessment of the distinctiveness of the earlier mark can rest on the distinctiveness per se of that sign.
Regarding the word "FOCUS", the Office highlights that this term does not bring any particular understandable indication in relation to the claimed goods in class 25 and the distinctiveness of the earlier mark must be seen as normal.
An exam of the contested trade mark demonstrates that there is a certain link between the ward "original" and "focus". In the case at hand, the word "original" can be perceived as qualifying the common term "FOCUS" and giving to its claimed goods the indication that they are original goods sold under the, trade mark "FOCUS". Consequently, the term "FOCUS" remains the main term of the sign. This is also emphasized by the fact that the element "FOCUS" appears in the centre of the sign in a bigger size than the element "Original".
Additionally, when a sign consists of ward and figurative elements, the word component tends to have a stronger impact on the consumer than the figurative element because the public usually refers to a sign by its word element as this is the easiest way to refer to the goods and services in question. In the case at hand the figurative element of the contested trade mark can be perceived as the form of a roof or as a single letter but is not so significant to dismiss the influence of the ward elements. Furthermore the slightly stylised writing of the word "FOCUS" has no influence on this decision since it is very close to a standard typeface.
The comparison of the signs demonstrates that the whole earlier mark is included in the more important element of the contested trade mark. Considering that the claimed goods are identical, it is considered that the visual, aural and conceptual high similarities between the signs are enough to counteract the visual and aural dissimilarities.
Considering all the above, the Office finds that there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent's Community trade mark registration. It follows that the application must be rejected for all the contested goods. Given that the opposition is entirely successful under Article 8(1)(b) CTMR it is not necessary to examine the remaining grounds on the basis of which the opposition was entered.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3)(6) and (7)(d)(i) of Community Trade Mark Implementing Regulation (CTMIR), the costs to be paid to the opponent are the opposition fees and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
1. Uphold opposition number B 684 151 for all the contested goods, namely athletic footwear; athletic shoes; boots; footwear; insoles; overshoes; sandals, shoes, ski boots; slippers; sneakers in class 25.
2. Reject application number 3 085 263 for all the contested goods, namely all of the goods in class 25. It may proceed for the remaining services of the application.
3. Order the applicant to bear the costs, which are fixed as follows:
Costs of representation EUR 300
Opposition fee EUR 350
Total amount EUR 650
The Opposition Division
Under Article 59 CTMR any party adversely affected by this decision has a right to appeal against this decision. Under Article 60 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 a 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 EUR 800 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) CTMIR 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 EUR 100 (Article 2(30) of the Community Trade Mark Fees Regulation (CTMFR)) has been paid.