Article on World Trademark Review Daily (May 2011)

In Lancôme parfums et beauté & Cie v Office for Harmonisation in the Internal Market (OHIM) (Case T- 466/08, April 14 2011), the General Court has held that there was a likelihood of confusion among the
German public between the mark ACNO FOCUS, owned by Lancôme parfums et beauté & Cie, and the earlier German mark FOCUS, owned by Focus Magazin Verlag GmbH.
Both marks covered the same goods in Class 3 of the Nice Classification – that is, ‘cosmetic and make-up preparations’.
Further to a notice of opposition filed by Focus Magazin, applicant Lancôme requested that the opponent furnish proof that the earlier national trademark FOCUS had been put to genuine use during the five-year period preceding the date of publication of the ACNO FOCUS mark. Focus Magazin argued that the earlier trademark FOCUS had been the subject of several oppositions in Germany since its registration in 1996 (all the oppositions were concluded in 2004) and, therefore, the obligation to use the mark started only in 2009.
The Opposition Division of OHIM agreed with Focus Magazin and confirmed that the latter was not required to furnish proof of use of its mark. The Opposition Division also found that the goods covered by the earlier mark and the trademark applied for were identical, and that the signs were highly similar. Lancôme’s application was therefore refused.
On July 29 2008 the First Board of Appeal of OHIM dismissed Lancôme’s appeal based on the same arguments.
On appeal, the General Court confirmed that Focus Magazin was not required to furnish proof of use of its earlier mark.
In particular, the court stated that, even if the Community Trademark Regulation (40/94) clearly states that the date of registration of an earlier national trademark is the date from which the five-year period of registration starts to run, it should be taken into consideration that the regulation does not enable the date on which the earlier national trademarks are considered to be registered in each of the member states to be determined.
Therefore, in the absence of specific provisions in the regulation, national law (in the present case, German law) must be taken into account. According to German law, a registered trademark may be the subject of an opposition (or oppositions) after its registration. As a consequence, German law provides that:
‘where use of a mark is required within five years from the date of registration thereof, the date of registration shall be replaced by the date of completion of opposition proceedings in cases where a
notice of opposition has been given to registration.’
For the sake of completeness, the General Court confirmed that there was a certain visual, phonetic and conceptual similarity between the marks at issue (especially considering the possible descriptiveness of the word ‘acno’), and that the goods at issue were identical. The General Court thus dismissed the action.


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