CANCELLATION No 15 229 C (INVALIDITY)

Taylorcocks Soregor International, Avenue Louise 523, Brussels, Belgium (applicant), represented by Céline Pires, Argymark, 52 boulevard Sébastopol, Paris, France (professional representative)

a g a i n s t

Eugenija Sutkienė, Konstitucijos pr. 21A, Vilnius, Lithuania (EUTM proprietor), represented by Indre Barauskiene, Law Firm TGS Baltic Konstitucijos ave. 21A, Vilnius, Lithuania (professional representative).

On 18/12/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 15 151 202 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080

REASONS

The applicant filed an application for a declaration of invalidity against all the services of European Union trade mark No 15 151 202 for the figurative mark below:

The application is based on European Union trade mark registration No 12 236 618 for the figurative mark below:

The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the marks at issue are similar and the services are either similar or identical. Although the device elements of the marks are slightly different, mainly due to colouring, the letters are the same three letters written in lower case and placed in the same order. The words ‘BALTIC LAW’ that appear in the contested mark are descriptive and will largely go unnoticed. The essential element TGS looks very similar in both marks and will be pronounced the same way. TGS has no meaning. Given the similarity of the marks and the identity or similarity of the services, a likelihood of confusion will arise.

The EUTM proprietor has not submitted any arguments in relation to the services covered by the marks. In relation to the signs, the EUTM proprietor argues that although there are some coincidences in the look and sound of the marks, they are not similar overall.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The services

The services on which the application is based are the following:

Class 45: Legal research; Legal services, including legal and research services; Licensing of computer software [legal services]; Representation of others in legal and tax matters; Intellectual property services, including management of intellectual property and copyrights; Licensing of intellectual property; Litigation services; Security consultancy; Security services for the protection of property and individuals; Personal and social services rendered by others to meet the needs of individuals; Including all of the aforesaid services provided electronically or online from a computer database or via the Internet; information, advisory and consultancy services relating to the aforesaid services.

The contested services are the following:

Class 45: Legal services; Solicitors' services; Barrister services; Alternative dispute resolution services; Alternative dispute resolution services [legal services]; Cartoon character licensing [legal services]; Arbitration services; Arbitration, mediation and dispute resolution services; Litigation services; Copyright protection; Copyright licensing; Copyright management; Copyright management consultation; Licensing of wireless communication system; Computer assisted litigation support; Litigation consultancy; Litigation support services; Designs (Registered, filing of -); Registration of domain names [legal services]; Expert consultancy relating to legal issues; Licensing of franchise concepts; Dispute resolution services; Information services relating to manufacturing standards; Provision of information relating to legal services; Company registration services; Adoption placement; Adoption agency services; Information services relating to trading standards; Information services relating to consumer rights; Providing information on issues concerning human rights; Providing information in the field of intellectual property; Providing information relating to legal affairs; Providing information on industrial property rights; Information, advisory and consultancy services relating to legal matters; Providing information on agencies for copyright licensing; Information services relating to legal matters; Licensing of intellectual property and copyright; Intellectual property consultancy; Intellectual property consultancy services for non-profit organisations; Licensing of intellectual property; Licensing of intellectual property in the field of copyrights [legal services]; Licensing of intellectual property in the field of trademarks [legal services]; Intellectual property services; Legal and judicial research services in the field of intellectual property; Monitoring intellectual property rights for legal advisory purposes; Enforcement of intellectual property rights; Management of intellectual property; Legal services relating to the exploitation of copyright and industrial property rights; Legal services relating to intellectual property rights; Legal services relating to business; Legal services relating to the management and exploitation of copyright and ancillary copyright; Legal services relating to copyright licensing; Legal services relating to the negotiation and drafting of contracts relating to intellectual property rights; Legal services relating to the exploitation of film copyright; Legal services relating to the exploitation of ancillary rights relating to film, television, video and music productions; Legal services relating to the acquisition of intellectual property; Legal services relating to the protection and exploitation of copyright for film, television, theatre and music productions; Legal services relating to the exploitation of transmission rights; Legal services for procedures relating to industrial property rights; Legal services relating to the exploitation of copyright for printed matter; Legal services relating to the exploitation of broadcasting rights; Legal services relating to company formation and registration; Granting of licenses relating to the copying of cable television programmes; Licensing of rights to films, television and video productions; Film, television and video licensing; Licensing of computer games; Computer licensing; Licensing of computer software [legal services]; Domain name advisory services; Advisory services relating to copyright; Advisory services relating to intellectual property protection; Advisory services relating to intellectual property rights; Advisory services relating to patents; Advisory services relating to regulatory affairs; Advisory services relating to consumers rights [legal advice]; Licensing of musical shows; Granting of licences to others for the use of industrial property rights and copyright; Licensing of databases; Licensing services relating to the manufacture of goods; Licensing authority services; Licensing services relating to performance rights; Consultancy relating to trademark licensing; Intellectual property consultancy services for inventors; Intellectual property consultancy services for universities and research institutions; Intellectual property consultancy services in the field of patents and patent applications; Consultancy services relating to the legal aspects of franchising; Industrial property consultancy; Consultancy relating to trademark protection; Consultancy relating to the protection of industrial designs; Consultancy relating to patent licensing; Consultancy relating to patent protection; Consultancy relating to the protection of new plant varieties; Consultancy relating to computer software licensing; Consultancy relating to the licensing of intellectual property; Consultancy relating to intellectual property management; Consultancy relating to the management of intellectual property and copyright; Consultancy relating to the protection of geographical indications; Consultancy relating to the registration of domain names; Consultancy relating to copyright protection; Personal legal affairs consultancy; Licensing of trademarks; Trademark agent services; Industrial property management; Consultancy relating to industrial property rights; Licensing industrial property rights; Copyright and industrial property rights management; Exploitation of industrial property rights and copyright by licensing; Industrial property watching services; Licensing of industrial property rights and copyright; Management and exploitation of copyright and industrial property rights by licensing for others; Management of copyright and industrial property rights for others; Patent attorney services; Patent and patent application licensing; Licensing of patents; Licensing of patent applications; Management of patents; Title searching; Litigation advice; Advisory services relating to the law; Licensing of musical works; Licensing services relating to music publishing; Pro bono legal services; Notarial services; Conveyancing services [legal services]; Conveyancing; Trademark watch services; Trademark watch services for legal advisory purposes; Trademark monitoring [legal services]; Enforcement of trade mark rights; Management of trademarks; Copyright (Professional advisory services relating to -); Professional legal consultations relating to franchising; Licensing of radio and television programs; Registration services (legal); Designs (Registered, licensing of -); Divorce mediation services; Licensing of printed matter; Copyright (Professional advisory services relating to licensing of -); Copyright (Professional advisory services relating to infringement of -); Professional advisory services relating to intellectual property rights; Registration of domain names for identification of users on a global computer network [legal service]; Registration of domain names for identification of users on a global computer network; Reviewing standards and practices to assure compliance with laws and regulations; Court reporting; Arbitration services relating to industrial relations; Licensing of rights relating to films; Licensing of rights relating to the use of photographs; Licensing of rights relating to audio productions; Legal services relating to the registration of trademarks; Legal services provided in relation to lawsuits; Provision of expert legal opinions; Legal services relating to wills; Legal services relating to the exploitation of patents; Legal services relating to the management, control and granting of licence rights; Legal services relating to the exploitation of intellectual property rights; Legal support services; Legal consultancy relating to intellectual property rights; Legal consultation in the field of taxation; Legal information research services; Legal advice; Compilation of legal information; Provision of judicial information; Legal assistance in the drawing up of contracts; Paralegal services; Legal research; Legal advice relating to franchising; Mediation; Licensing of technology; Legal advice and representation; Licensing of rights relating to video productions; Preparation of regulations; Mediation services for marital disputes; Mediation in legal procedures; Licensing of rights relating to television productions; Licensing of rights relating to television, video and radio programs, productions and formats; Certification of legal documents; Preparation of legal reports; Arranging for the provision of legal services; Legal investigation services; Bailiff services (legal services); Expert witness services; Granting of licenses relating to the copying of broadcast television programmes; Enforcement of testaments; Investigations in relation to intellectual property; Investigation services related to insurance claims; Licensing of research and development; Notary public services; Preparation of legal reports in the field of human rights; Legal document preparation services; Legal mediation services; Legal administration of licences.

The term including, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of in particular see reference in judgment of 09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

Contested services in Class 45

The contested legal services are included identically in the earlier list of services.

The remaining contested services may be divided into the broad categories of legal services (for example, Solicitors' services; Barrister services; Legal services relating to the exploitation of intellectual property rights), the licensing of various types of rights (for example, Licensing of rights relating to the use of photographs; Licensing of rights relating to audio productions), and providing information, advisory and consultancy services in connection with legal matters (for example, Consultancy relating to trademark licensing; Intellectual property consultancy services for inventors; Advisory services relating to copyright; Provision of judicial information). The earlier services include the broad category of legal services. The Cancellation Division considers that all of the contested services are at least similar to the applicant’s legal services since both the applicant’s and the EUTM proprietor’s services will be provided by the same companies, aimed at the same target consumer and serve a similar purpose.

2. Relevant public — degree of attention

The average consumer of the category of services concerned is deemed to be reasonably well-informed, observant and circumspect. It is assumed that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services in Class 45 found to be identical and at least similar are directed both at the public at large and specialist consumers, such as members of the legal profession. The degree of attention of consumers will be higher than average due to the fact that the services will probably be costly and not commissioned on a regular basis.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark consisting of the letters “tgs”, depicted in white lower case letters, placed within an orange square (see above). It is common ground that the letters TGS convey no meaning and are distinctive in connection with the services. The orange square serves merely a decorative purpose and highlights the word element “tgs”. Therefore, it is the word element “tgs” that is the most distinctive part of the earlier sign. This sign has no element which could be considered more dominant than other elements.

The contested mark is a figurative mark consisting of the slightly stylised letters “tgs” in black bold lower case letters, with the words BALTIC LAW written in much smaller letters underneath. Reference is made to the above findings on the distinctive character of the verbal element “tgs”. The words BALTIC LAW will be understood by English speakers as ‘a system of rules deriving from the Baltic states’. Since all of the contested services are connected with law in some way, these words will be deemed as non-distinctive by English speakers since they describe the system of law at issue and for these consumers the most distinctive part of the sign is “tgs”. The members of the relevant public who do not speak English will only understand ‘BALTIC’, as it exists either as an identical or similar word in other European languages. Since ‘BALTIC’ is understood, it lacks distinctiveness as it will be seen as describing the geographical origin of the contested services. ‘LAW’ will probably not be understood by non-English speakers and will be seen as possessing an average degree of distinctiveness in connection with the services.

“TGS” is the visually dominant element in the contested sign due to its larger size, its position and the use of a bold typeface that makes it stand out. Moreover, it is also distinctive in connection with the services.

Visually and aurally, the signs coincide in the letters TGS. There are minimal differences in the style of the lettering. The letters in the contested mark are black and in the earlier mark they are white. The only differentiating factors of any note between the earlier mark and the contested mark are: (i) the earlier mark contains the device of an orange square background but which serves merely a decorative role; and (ii) the contested mark has the words ‘BALTIC LAW’ added, which have in any case been found non-distinctive in connection with the services for English speakers, and at least non-distinctive as regards ‘BALTIC’ for the remaining members of the relevant public.

Therefore, the signs are visually and aurally are highly similar, since even though the contested sign contains a word which is distinctive for some consumers (LAW), it is short and placed at the end of the sign.

Conceptually, the public in the relevant territory will not perceive the letter combination TGS to have any meaning. The words BALTIC LAW will be understood as having the meanings given above, and some consumers will not perceive any meaning in ‘LAW’. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The marks have been found visually and aurally highly similar and the services identical and at least similar.

The contested mark contains the extra words ‘BALTIC LAW’, which the EUTM proprietor argues will enable consumers to distinguish the contested mark from the earlier mark. However, the words ‘BALTIC LAW’ have been found to be lacking distinctiveness for part of the relevant consumers, and for others, ‘BALTIC’ lacks distinctiveness. Therefore, the relevant consumer will place less importance on the words ‘BALTIC LAW’, either due to lack of distinctiveness of both words or, where LAW is not understood and is distinctive, due to it being short and placed at the end of the sign, and will focus more on the three letter sequence TGS. This finding is reinforced by the fact that TGS is the dominant element of the contested mark and distinctive for all consumers. Even for consumers for whom no meaning is conveyed by ‘LAW’, ‘TGS’ is visually dominant. Bearing these factors in mind, the EUTM proprietor’s claim that the two marks do not look or sound similar is not credible.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the application is well-founded on the basis of the applicant’s European Union trade mark registration No 12 236 618. It follows that the contested trade mark must be declared invalid for all the contested services.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Liliya YORDANOVA

Lucinda CARNEY

Nicole CLARKE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.