JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

5 October 2012 (*)

(Community trade mark – Invalidity proceedings – Community word mark COLOR FOCUS – Earlier Community word mark FOCUS – Relative ground for refusal – Likelihood of confusion – Similarity of the marks – Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 – Genuine use of the earlier mark – Abuse of right)

In Case T‑204/10,

Lancôme parfums et beauté & Cie, established in Paris (France), represented by A. von Mühlendahl and S. Abel, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by S. Schäffner, and subsequently by A. Folliard-Monguiral, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Focus Magazin Verlag GmbH, established in Munich (Germany), represented by R. Schweizer and J. Berlinger, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 February 2010 (Case R 238/2009-2), concerning invalidity proceedings between Focus Magazin Verlag GmbH and Lancôme parfums et beauté & Cie,

THE GENERAL COURT (Eighth Chamber),

composed of L. Truchot (Rapporteur), President, M.E. Martins Ribeiro and A. Popescu, Judges,

Registrar: C. Heeren, Administrator,

having regard to the application lodged at the Court Registry on 3 May 2010,

having regard to OHIM’s response lodged at the Court Registry on 2 August 2010,

having regard to the intervener’s response lodged at the Court Registry on 5 August 2010,

further to the hearing on 26 April 2012,

gives the following

Judgment

 Background to the dispute

1        On 30 September 1999, the applicant, Lancôme parfums et beauté & Cie, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        The mark in respect of which registration was sought is the word sign COLOR FOCUS.

3        The goods in respect of which registration was sought are in Class 3 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Cosmetic and make-up preparations’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 2000/45 of 5 June 2000. The mark was registered on 30 June 2004.

5        On 25 August 2004, the intervener, Focus Magazin Verlag GmbH, filed at OHIM an application for a declaration of invalidity against that mark, pursuant to Article 55 of Regulation No 40/94 (now Article 56 of Regulation No 207/2009), in respect of the goods referred to in paragraph 3 above.

6        The application for a declaration of invalidity was based, in particular, on the earlier Community word mark FOCUS, which had been filed on 17 January 1997 under number 453 720 and registered on 26 August 2008.

7        That mark covers goods in Class 3 and corresponding to the following description: ‘Make-up, cosmetics’.

8        The application for a declaration of invalidity was based on all of the goods covered by the earlier mark and was directed against all the goods covered by the contested mark.

9        The ground put forward in support of the application for a declaration of invalidity was that referred to in Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009), read in conjunction with Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

10      On 12 December 2008, the Cancellation Division upheld the application for a declaration of invalidity filed by the proprietor of the earlier mark, on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, between the marks at issue.

11      On 13 February 2009, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Cancellation Division.

12      By decision of 11 February 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. After finding that the goods covered by the marks at issue were identical and that the relevant public was composed of the general public in the European Union, the Board of Appeal compared the respective distinctiveness of the marks at issue. It found that the element ‘focus’, common to those marks, did not have a diminished distinctive character in relation to the cosmetic goods for which the marks at issue had been registered and that the word element ‘color’ was purely descriptive, since it referred directly to the type or purpose of the product for which the contested mark was registered. Going on to examine the similarities between the marks at issue, the Board of Appeal found that the element ‘color’ of the contested mark was not such as to counteract the visual, phonetic and conceptual similarities of the marks and inferred from this that there was a likelihood of confusion between them. It also rejected the argument of the proprietor of the contested mark that the application for a declaration of invalidity submitted by the proprietor of the earlier mark amounted to an abuse of right. It found that the applicant for a declaration of invalidity was not required to prove use of its mark since, on the day on which the application for a declaration of invalidity had been made, the mark in question had not been registered for at least five years. It added, moreover, that the applicant for a declaration of invalidity did not allow an improper use of rights under that mark when, during the five-year period during which it was not required to prove use of that mark, it sought the invalidation of a similar, later Community mark.

 Forms of order sought

13      The applicant claims that the Court should:

–        annul the contested decision;

–        annul the decision of the Cancellation Division of OHIM of 12 December 2008 in Case 990 C;

–        dismiss the application for a declaration of invalidity made by the intervener with regard to Community mark FOCUS registered under No 1327410, in so far as that application is based on Community mark FOCUS No 453720;

–        order OHIM and the intervener to pay the costs, including those incurred during the procedure before the Board of Appeal.

14      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

15      The applicant relies on two pleas in law in support of its claim alleging, first, infringement, by the Board of Appeal, of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, and, second, that the Board of Appeal erred in law in the assessment of the abusive nature of the application for a declaration of invalidity submitted by the intervener.

 The first plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation

16      The applicant claims that the Board of Appeal erred in holding that there was a likelihood of confusion on the part of the relevant public between the marks at issue.

17      Pursuant to Article 53(1)(a) of Regulation No 207/2009, a Community trade mark is to be declared invalid on application to OHIM where there is an earlier trade mark within the meaning of Article 8(2) of that regulation and, in particular, the conditions set out in Article 8(1)(b) of that regulation are fulfilled.

18      Under Article 8(2)(a)(i) of that regulation, ‘earlier trade marks’ means Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark of which annulment is sought.

19      Under Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009, a Community trade mark is to be declared invalid when, 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.

20      The relative ground for invalidity arising under Article 53(1)(a) of Regulation No 207/2009, in conjunction with Article 8(1)(b) of that regulation, corresponds to the relative ground for refusal of registration laid down in the latter provision. Therefore, the case-law relating to the likelihood of confusion, within the meaning of Article 8(1)(b) of that regulation, is also relevant in the present context (judgment of 15 April 2010 in Case T‑488/07 Cabel Hall Citrus v OHIM – Casur (EGLÉFRUIT), not published in the ECR, paragraph 25).

21      According to settled case-law, the risk that the relevant 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. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33, and EGLÉFRUIT, paragraph 20 above, paragraphs 26 and 27 and the case-law cited).

22      It also follows from settled case-law that, in order to determine the existence of a likelihood of confusion, the marks must be compared through a global evaluation of their visual, phonetic and conceptual similarity. The comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35).

23      According to the case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30).

 Relevant public and comparison of the goods

24      It follows from the contested decision, which, in that regard, is not disputed and must be approved, that, since the earlier mark is a Community mark and the goods covered by the marks at issue, namely, cosmetic and make-up products, are everyday consumer goods, the relevant territory for the purposes of assessing the likelihood of confusion is the European Union and the relevant public consists of average consumers who are reasonably well informed and reasonably observant and circumspect (see Case T‑466/08 Lancôme v OHIM – Focus Magazin Verlag (ACNO FOCUS) [2011] ECR I‑0000, paragraph 49 and the case-law cited).

25      It is also necessary to approve the finding, which is not disputed by the parties, that the goods designated by the marks at issue are identical, namely, cosmetic and make-up products.

 Comparison of the marks

26      First of all, it must be noted that the applicant does not dispute the finding, of the Board of Appeal at paragraphs 23 and 24 of the contested decision and which must be approved, that the marks at issue are visually and phonetically similar overall.

27      By the first complaint, the applicant claims that the Board of Appeal merely, contrary to what is required by the assessment of the likelihood of confusion, stated, at paragraphs 23 and 26 of the contested decision, that there were similarities between the signs at issue, without analysing the degree of those similarities. Consequently, the content of paragraph 26 of that decision cannot fulfil the duty to state reasons laid down in Article 75 of Regulation No 207/2009.

28      It must be noted that, at paragraph 23 of the contested decision, the Board of Appeal found that, visually, the marks at issue have ‘an overall similarity … resulting from the overlap in the distinctive word element “FOCUS”’, which results in the finding of an average degree of similarity between the marks at issue. Therefore, the applicant’s complaint regarding the lack of an assessment of the degree of similarity between those marks must be rejected.

29      Consequently, the complaint relating to breach of the duty to state reasons resulting from the lack of assessment of the degree of similarity between the marks at issue must also be rejected.

30      By the second complaint, the applicant disputes the assessment of the Board of Appeal that the marks at issue are conceptually similar, since the element ‘color’, because of its descriptive character, does not give the contested mark a different meaning to that of the earlier mark, which would be capable of counteracting the visual and phonetic similarities between the marks.

31      It claims, on the contrary, that the marks at issue are not conceptually similar, on the ground that the combination ‘color focus’ carries a ‘brand message … totally different from the message carried by the words “color” alone or “focus” alone’. In support of that argument it relies on the judgment in Case T‑34/04 Plus v OHIM – Bälz and Hiller (Turkish Power) [2005] ECR II‑2401.

32      It must be held that, as OHIM rightly pointed out, the applicant, first, did not describe the ‘brand message’ that the mark COLOR FOCUS conveys and, second, did not indicate how the message is different from that conveyed by the words ‘color’ and ‘focus’ considered separately.

33      By doing so, the applicant denied OHIM and the intervener the opportunity of responding to that claim and prevented the Court from ruling on that point. Therefore, that complaint does not fulfil the requirements of Article 44(1)(c) of the Rules of Procedure and, accordingly, must be rejected as inadmissible (see, to that effect, judgment of 9 July 2010 in Case T‑430/08 Grain Millers v OHIM – Grain Millers (GRAIN MILLERS), not published in the ECR, paragraph 38).

34      Furthermore, the applicant’s reliance on Turkish Power, paragraph 31 above, cannot overcome the inadequacy of its argument. In that case, the Court held that, as a whole, the meaning of the sign ‘Turkish Power’ differed from that of ‘power’, the sole word element of the earlier national mark, on the ground, in particular, that the figurative element of the trade mark applied for added a distinct connotation to the single concept of strength conveyed by the word element ‘power’ of the earlier mark. The Court also noted appreciable visual and phonetic differences between the figurative mark applied for and the earlier word mark. However, in the present case, as is stated above, not only are the mark applied for and the earlier mark purely word marks, so that they cannot be distinguished by the existence, in one of them, of a figurative element but, further, it is not disputed that they are visually and phonetically globally similar.

35      Therefore, the applicant’s argument designed to show that the marks at issue are not conceptually similar must be rejected.

36      It follows from the foregoing that the Board of Appeal was correct in finding that the marks at issue are visually, phonetically and conceptually similar.

 Likelihood of confusion

37      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those 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, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).

38      As was stated at paragraphs 25 and 36 above, the Board of Appeal was correct in finding that the goods covered by the marks at issue are identical and that the marks at issue are visually, phonetically and conceptually similar.

39      The Board of Appeal was also correct in finding, at paragraph 21 of the contested decision, without the parties disputing it, that the element ‘color’ of the contested mark is purely descriptive, from which it inferred, at paragraph 23 of the contested decision, that that element does not leave a lasting impression in the mind of the consumers.

40      At paragraph 25 of the application, the applicant claims that the contested decision contains no ‘specific finding’ about the distinctive character of the earlier mark FOCUS. With that claim, the applicant, as it confirmed during the hearing, alleges that the Board of Appeal did not examine the distinctive character of the earlier mark FOCUS.

41      It must be stated that, as the applicant pointed out, the Board of Appeal, first, at paragraph 20 of the contested decision, rejected the applicant’s argument that the earlier mark FOCUS ‘ha[d] a diminished distinctive character in relation to cosmetics’ and, second, at paragraph 23 of that decision, found that the element ‘focus’ is ‘perfectly distinctive’ in relation to the goods for which those marks had been registered. At the end of the same paragraph, it also confirmed that that element constitutes a ‘distinctive word element’.

42      Therefore, it is clear from the contested decision that, contrary to what the applicant claims, the Board of Appeal did assess the distinctive character of the earlier mark FOCUS.

43      It is apparent from paragraph 26 of the application and the arguments developed before the Board of Appeal, which the applicant reiterates in the present action at paragraph 24 of the application, that the applicant also disputes the validity of that assessment.

44      It claims that the earlier mark FOCUS has a very weak distinctive character and that, therefore, there is no likelihood of confusion between the marks at issue.

45      It recalls producing before the Board of Appeal, in support of that claim, the results of a trademark search containing the element ‘focus’, carried out in the Register of Community Trade Marks, as well as in the French and German registers of marks, including international registrations. It is apparent from the results of that research, presented in table form, that there are a number of marks covering various goods, including the goods for which the marks at issue have been registered, which consist of the element ‘focus’ or which contain that element. That fact results in the mark FOCUS having only a very weak distinctive character.

46      It should be noted that, admittedly, according to the case-law, the possibility cannot be entirely excluded that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two marks at issue. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds of refusal, the proprietor of the contested Community mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s mark on which the application for annulment is based, and provided that the earlier marks concerned and the marks at issue are identical (see, by analogy, Case T‑31/03 Grupo Sada v OHIM – Sadia (GRUPO SADA) [2005] ECR I‑1667, paragraph 86, and judgment of 14 November 2007 in Case T‑101/06 Castell del Remei v OHIM – Bodegas Roda (CASTELL DEL REMEI ODA), not published in the ECR, paragraph 76).

47      It follows from the foregoing that, in order to establish the validity of its claim, the applicant must prove that, first, the identical marks of the marks at issue, namely FOCUS and COLOR FOCUS, already coexist on the market and, second, there is no likelihood of confusion between those marks. To that end, the mere production of extracts from databases relating to the registration of marks is insufficient (see, in that regard, GRUPO SADA, paragraph 46 above, paragraph 87, and judgment of 16 December 2008 in Case T‑259/06 Torres v OHIM – Navisa Industrial Vinícola Española (MANSO DE VELASCO), not published in the ECR, paragraph 77).

48      In the present case, the applicant refers to a table, dated February 2009, which it produced before the Board and Appeal and which draws up a list of marks consisting of the element ‘focus’ or containing that element. The following is specified for each mark: the registry in which that mark is registered; the number under which that mark was registered; the year of registration; the number of the volume and the page of the register in which that registration appears; the classes of goods and services, within the meaning of the Nice Agreement, for which that mark was registered.

49      It is apparent from that table that a mark FOCUS and two marks COLOR FOCUS appear in the French register of marks.

50      However, since it shows only that those marks are registered, that table, the only evidence in support of the applicant’s claim, does not constitute evidence of the use of those marks, as the applicant admitted before the Board of Appeal and in the present action, at paragraph 24 of the application, and as the Board of Appeal rightly found at paragraph 20 of the contested decision. Furthermore, that table does not show their coexistence on the market or that there is no likelihood of confusion between those marks.

51      In those circumstances, the view must be taken that the applicant did not show that, in accordance with the case-law cited at paragraph 46 above, the marks at issue coexisted on the market without a likelihood of confusion between them or, furthermore, that such a coexistence weakened the distinctive character of the mark FOCUS.

52      Therefore, the Board of Appeal’s assessment relating to the distinctive character of the earlier mark FOCUS must be upheld.

53      Moreover, it must be found that the mere fact that a number of trade marks designating similar goods contain the word ‘focus’ is not enough to establish that the distinctive character of that element has been weakened because of its frequent use in the field concerned (see, to that effect, judgment of 16 September 2009 in Case T‑400/06 Zero Industry v OHIM – zero Germany (zerorh+), not published in the ECR, paragraph 73 and the case-law cited).

54      In any event, the finding of a weak distinctive character for the earlier mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see Case T‑134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II‑5213, paragraph 70 and the case-law cited).

55      It follows from the foregoing that the Board of Appeal was correct in deducing the existence of a likelihood of confusion on the part of the relevant public between the marks at issue from the identity of the goods at issue, the similarity of the marks at issue and the distinctive character of the earlier mark.

56      It follows that the first plea in law must be rejected.

 Second plea in law, alleging an error of law in the assessment of the abusive nature of the application for a declaration of invalidity

57      The applicant claims that the Board of Appeal erred in finding that the intervener was not required to prove the use of the mark FOCUS, of which it is proprietor, and, consequently, rejected its argument that the application for a declaration of invalidity made by the intervener was an abuse of right, on the ground that the mark FOCUS had not been registered for at least five years on the day on which the application for a declaration of invalidity was made.

58      The intervener has registered numerous national or Community marks consisting of the word element ‘focus’ or containing that element, to designate a wide range of goods and services, without ever having the intention of using those marks and without ever having used them, in particular to designate the goods in Class 3. In doing so, it prevents other economic operators from registering marks containing the element ‘focus’ with the intention of using them. Therefore, the application for a declaration of invalidity made by the intervener against the mark COLOR FOCUS, in so far as it is based solely on the option it has of not using the mark FOCUS during five years from its registration, when it has no intention of using that mark, goes against the economic justification underpinning the Community trade mark regime and prevents that mark from fulfilling its main function. For those reasons, that application for a declaration of invalidity constitutes an abuse of right.

59      It should be noted that, according to settled case-law, Community law may not be relied on for abusive or fraudulent ends (see, to that effect, Case C‑255/02 Halifax and Others [2006] ECR I‑1609, paragraph 68 and the case-law cited).

60      Evidence of an abusive practice requires, first, a combination of objective circumstances in which, despite formal observance of the conditions laid down by the Community rules, the purpose of those rules has not been achieved, and, second, a subjective element consisting in the intention to obtain an advantage from the Community rules by creating artificially the conditions laid down for obtaining it (see, by analogy, Case C‑515/03 Eichsfelder Schlachtbetrieb [2005] ECR I‑7355, paragraph 39 and the case-law cited).

61      In the present case, it should be noted that the applicant merely claims that the intervener’s application for a declaration of invalidity constitutes an abuse of right, without producing evidence likely to establish that the latter registered the mark FOCUS with the fraudulent intention of not using it, in order to prevent other economic operators from registering certain marks.

62      Accordingly the applicant has not proved the subjective element, within the meaning of the case-law referred to at paragraph 60 above, of the abuse of right which it alleges against the intervener.

63      Therefore, the view must be taken that the applicant has not shown that the application for a declaration of invalidity made by the intervener was abusive.

64      Moreover, it should be noted that Article 57(2) of Regulation No 207/2009 states that, ‘[i]f the proprietor of the Community trade mark so requests, the proprietor of an earlier Community trade mark, being a party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his application, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years.’

65      It follows from that provision that the proprietor of an earlier Community trade mark, party to invalidity proceedings, is required to prove use of that mark only in so far as, at the date of the application for a declaration of nullity, the earlier Community trade mark had been registered for not less than five years.

66      In the present case, it is not disputed that the intervener filed an application for a declaration of invalidity of the mark COLOR FOCUS on 25 August 2004 and that the earlier mark FOCUS, of which it is proprietor, was registered on 26 August 2008.

67      It follows that the period of five years, mentioned in Article 57(2) of Regulation No 207/2009, did not begin to run until the date of registration of the mark FOCUS, namely, 26 August 2008. Therefore, as the Board of Appeal correctly pointed out, the intervener was not required, at the date of the application for a declaration of invalidity, made on 25 August 2004, to prove genuine use of that mark, which had not yet been registered as a Community trade mark and, therefore, did not benefit from the protection of Regulation No 40/94.

68      Consequently, the second plea in law must be rejected.

69      As none of the pleas in law relied on by the applicant are well founded, the action must be dismissed in its entirety, without there being any need to rule on the admissibility, disputed by OHIM, of the applicant’s second and third heads of claim, relating to the annulment of the Cancellation Division’s decision and the rejection of the application for a declaration of invalidity made by the intervener respectively.

 Costs

70      Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

71      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Lancôme parfums et beauté & Cie to pay the costs.

Truchot

Martins Ribeiro

Popescu

Delivered in open court in Luxembourg on 5 October 2012.

[Signatures]