Case T-466/08

Lancôme parfums et beauté & Cie

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for the Community word mark ACNO FOCUS – Earlier national word mark FOCUS – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Genuine use of the earlier mark – Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009))

Summary of the Judgment

1.      Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Point from which the five-year period starts to run – Date of registration of the earlier mark

(Council Regulation No 40/94, Art. 43(2) and (3); Council Directive 89/104)

2.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark

(Council Regulation No 40/94, Art. 8(1)(b))

1.      It follows from Article 43(3) of Regulation No 40/94 on the Community trade mark that the proprietor of an earlier Community trade mark who has given notice of opposition is required to prove use of that mark only in so far as, at the date of publication of the Community trade mark application, the earlier Community trade mark had been registered for not less than five years.

Article 43(3) of Regulation No 40/94 provides, ‘[p]aragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community’.

Although it is clear from Article 43(2) of Regulation No 40/94, in conjunction with Article 43(3) thereof, that the registration of an earlier national trade mark is the point from which the five-year period of registration starts to run, it must be observed that Regulation No 40/94 does not enable the date on which the earlier national trade marks are considered to be registered in each of the Member States to be determined.

Although national trade mark law was harmonised by First Directive 89/104 on trade marks, that directive does not harmonise the procedural aspect of trade mark registration, and it is thus for the Member State for which the registration application has been filed to determine, in accordance with its own procedural rules, the time at which the registration procedure comes to an end.

It follows that, in the absence of a relevant provision in Regulation No 40/94 or Directive 89/104, reference must be made to the national law of the Member State concerned in order to determine the date on which an earlier national trade mark is registered.

(see paras 27-28, 30-32)

2.      There is a likelihood of confusion for the German public between the word sign ACNO FOCUS, for which registration as a Community trade mark is sought for ‘Cosmetic and make-up preparations’ in Class 3 of the Nice Agreement, and the word mark FOCUS, registered previously in Germany in respect of goods and services in Class 3, inter alia.

There is a certain visual, phonetic and conceptual similarity between the signs at issue. In addition, the goods at issue are identical. Accordingly, in particular because the relevant public retains only an imperfect picture of the marks at issue, with the result that their common component ‘focus’ creates a certain similarity between them, and because of the interdependence of the various factors to be taken into account, it must be concluded that there is a likelihood of confusion between the two signs at issue.

(see paras 46, 49, 69-70)