If ever there was a time when make-up was required to hide the red faces at one of the world's largest cosmetic companies, then following the handing down of the decision in T-204/10 would have been it! Perhaps now Lancôme will 'focus' on some other brand names, or perhaps they will simply bide their time and look to get their revenge.
This appeal to the General Court was one of a number of spats between Lancôme and Focus Magazin, a German publishing house (amongst other things). A previous decision (Case T-466/08) had also gone against Lancôme (using the same formidable legal team), so why they perhaps thought their luck would change only they would know.
On 17th January 1997, Focus Magazin applied to register the mark 'FOCUS' for a whole raft of goods and services, including 'make-up, cosmetics'. In fact, a large number of businesses brought opposition proceedings, and as a result, the mark was not formally registered until 26th August 2008, some 11 and a half years after the initial application.
Lancôme filed for the word sign 'COLOR FOCUS' for 'cosmetic and make-up preparations'. The mark was duly registered on 30th June 2004. On the 25th August 2004, Focus Magazin sought a declaration of invalidity based on their earlier CTM application, on the basis that the marks were similar and the goods were identical and therefore there would be a likelihood of confusion, including a likelihood of association. In December 2008, the Cancellation Division agreed with Focus Magazin that there was a likelihood of confusion. Lancôme appealed, but the Second Board of Appeal considered that:
- Focus Magazin's CTM application constituted a 'earlier trade mark' which could form the basis of an invalidity action (by reason of Article 53(1)(a) of Regulation No 207/2009 read in conjunction with Article 8(1)(b) );
- The element 'Focus' was a dominant part of the mark 'COLOR FOCUS', as 'COLOR' was a purely descriptive term;
- Arising out of that, the visual, phonetic and conceptual similarities were such that the marks would be considered to be similar;
- The goods were identical; and
- The average consumer was the relevant public.
That being the case, the Second Board of Appeal upheld the Cancellation Division's decision that confusion would be likely. They also dismissed the additional plea, namely, that by applying to invalidate Lancôme's CTM, Focus Magazin was in some way abusing its rights. This was on the basis that Focus Magazin had not proved use of its mark at the time it made the application for invalidity. This was rejected as a proprietor is not obliged to prove use if the mark has been on the register less than 5 years. As this is quite clearly stated in Article 57(2) of Regulation No 207/2007, it baffles this author as to why Lancôme ever thought this argument would get off the ground. Needless to say, it was rejected.
Appeal to the General Court
Undeterred by having lost in the previous case, as well as twice already in this action, Lancôme appealed. They lost again. As well as setting out in some detail why the Second Board of Appeal came to the right decision, the General Court followed the (by now) well trodden path as to who the average consumer was, the test for similarity of the marks (visual, phonetic and conceptual analysis), that the goods were identical, and therefore there was a likelihood of confusion. Interestingly, in arguing the issue of likelihood of confusion, Lancôme put forward evidence from all the various trade mark registries around Europe in an effort to establish 'co-existence' and (although they have not specifically said so) the new found ability to rely on 'honest concurrent use', which hitherto had been a peculiarity existing only within the English trade mark system. That too was doomed to fail, not least because Focus Magazin had not 'used' the mark in relation to the goods, so there could not be any 'co-existence' as such. The General Court was equally dismissive of the 'abuse of right' argument Lancôme used.
Inevitably, there is more to this case than meets the eye from the dry legal analysis of the General Court, and the undoubtedly clever, but perceived as increasingly desperate, arguments used by Lancôme. One can only assume that Lancôme knew what the likely outcome would be, but nevertheless considered it worthwhile going all the way. Certainly in so far as the UK official website of Lancôme is concerned, you will not find the mark 'COLOR FOCUS' at all. One can only imagine that the concern was that the 'relationship' existing between Focus Magazin and Lancôme, was such that Lancôme feared it was only a matter of time before Focus Magazin brought an action for an infringement, which would have been a whole lot more costly.
Are there any real lessons to be learned from this particular case? No, although it is disappointing that a particular nuanced bad faith argument was not run, as this case seemed perfectly set up for it. We will just have to wait another time for that. If it highlights anything, it is that the accident of the system, which enables an application to take over 11 years to become a registration, and which in the meantime can block other marks which are genuinely used by third parties, is open to abuse, or perhaps more accurately, mis-use.
All that truly is certain, is that the 27th August 2013, being 5 years and a day after Focus Magazin's mark was registered, is a date in Lancôme's trade mark lawyers' diaries!
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