OUT OF FOCUS; PLEASE, SIR ...

1 Out of Focus?

Yesterday the Court of First Instance (CFI) gave its decision in Case T-275/03 Focus Magazin Verlag GmbH v Office for Harmonisation in the Internal Market.

ECI applied to register as a Community trade mark (CTM) the word sign Hi-FOCuS for telecoms goods and services in Classes 9 and 38. Focus Magazin opposed, arguing there was a likelihood of confusion under Article 8(1)(b) of CTM Regulation and relying on its earlier German trade mark FOCUS; this mark was registered in 24 Classes of goods and services and Focus Magazin complained of a likelihood of confusion in respect of all of them. The notice of opposition contained a certificate of registration of the German mark, in German, and also a certificate of registration of the international trade mark FOCUS, this time in French.

The Opposition Division told Focus Magazin that, since it had not provided a complete translation into French (the language of the proceedings) of the certificate of registration of the German trade mark on which the opposition was based, the opposition failed. Focus Magazin then appealed to the Board of Appeal, supplying a an annex to its appeal a French translation of the German certificate. This appeal was dismissed, following which it made a further appeal to the CFI.

This time Focus Magazin struck lucky. The CFI allowed the appeal and annulled the Board's decision holding that, by failing to take into consideration the document produced by Focus Magazin within the time limit, the Board of Appeal had acted outside the scope of Art.74 of the CTM Regulation. The Board should have based its decision on all the matters of fact and of law, whether they were introduced in the proceedings at first instance or in the appeal. Since the document in question had been annexed to the pleading lodged before the Board of Appeal, the Board ought to have taken account of that document.

This is the sort of trade mark litigation that the IPKat hates. The opponent should have put all its evidence in order before the Opposition Division hearing; the Board of Appeal should have considered it (the Boards don't like being treated like first instance decisors though). The trade mark was applied for more than six years ago and this opposition has been litigated all the way from Spain to Luxembourg without even getting to the starting line. Worst of all, FOCUS is such a crummy mark. It's used by so many products and services that it's almost as hackneyed as the IPKat's much-hated lightbulb motiv. Merpel adds: six years, for this?? This little spat could be resolved by sitting the parties down for 20 minutes and hitting their heads together every so often ...

Some other FOCUSes here, here, here, here, here and here



2 German court under fire from Advocate General

A more enjoyable read is Case C-206/04 P Muehlens GmbH & Co. KG v Office for Harmonisation in the Internal Market, in which Advocate General Ruiz-Jarabo Colomer (left) delivered his Opinion this morning. This is an exciting scrap between Zirh International Corp., a CTM applicant who wants to register the word mark ZIRH for perfumes and toiletries and Muehlens, and Muehlens, who hold an earlier figurative mark for much the same goods containing the word SIR. A likelihood of confusion is alleged. The Opposition Division, the Board of Appeal and the Court of First Instance have all rejected the opposition but Muehlens perserveres, fortified by the fact that a German court has ruled that there is a likelihood of confusion in infringement proceedings between the same two signs.

In advising the European Court to reject Muehlens' appeal, the Advocate General concluded his opinion as follows:

"74. ... when a national court gives a decision in which it employs an indeterminate legal concept backed up by a directly applicable Community provision, such as that relating to the likelihood of confusion of Community trade marks, in a manner that openly conflicts with the case-law of the Court of First Instance of the European Communities, compliance with the abovementioned obligations and the great importance of the system of preliminary references require it to have recourse to Article 234 EC in order to avoid the legal uncertainty which, in judicial circles, arises from the coexistence of divergent judgments within the Union.

75. The German court’s decision rejects the Court of First Instance’s thesis that the degree of phonetic similarity between the two trade marks is so insignificant that it will not give rise to any likelihood of confusion, since the degree of identity of the marks is not sufficiently great. In giving reasons for its decision, the Landgericht Hamburg relies on the case-law of the Bundesgerichtshof (German Supreme Court in civil and criminal matters), according to which failure to consider phonetic similarities when evaluating the likelihood of confusion unjustifiably deprives the proprietor of the trade mark of some of the protection to which he is entitled.

76. Even if it is accepted that the national judicial authorities to which Article 234(2) EC applies, such as the Landgericht Hamburg, enjoy a degree of latitude as regards preliminary references, (44) the need for the uniform application of Community law dictates that recourse must be had to Article 234 EC, specifically where the approach taken by a national high court is at odds with that taken by a Community Court, particularly if the decisive impact which a request for a ruling might have had in resolving the dispute is taken into account.

77. The fact that the decision given by the first German court was open to appeal does not diminish the harm caused, essentially by creating legal uncertainty, as the Commission has emphasised. Faced with such a clear conflict of interpretation of a Community provision, the only course open to that court was to use Article 234 EC; (45) it is to be hoped, however, that an appeal court will mitigate the effects of the situation that has arisen, for the sake of interpretative rigour and the European spirit that has presided over the comportment of the judicial authorities in that country, which has always led the field so far as concerns the sincere cooperation with the Court of Justice provided for by the Treaties.

78. In short, we should probably not just complain of the way the Landgericht Hamburg has conducted itself in this context; we must also hope that such dysfunctions will be brought to an end and that the legislature will become aware of how urgent it is to improve the complex legislative framework set up to facilitate harmonious development of economic activity in the Community as a whole, achieving full establishment and proper functioning of the internal market within a European Union that is increasingly convinced of the importance of its contribution to the construction of a better continent".

Stirring stuff, the IPKat says! But will the Court agree next Spring?