General Court finds no similarity between Class 36 services

On June 10 2015 the General Court rendered its judgment in AgriCapital Corporation v Office for Harmonisation in the Internal Market (OHIM) (Case T-514/13). The case was an appeal from a decision of the Second Board of Appeal of OHIM dated July 10 2013 (Case R 2236/2012-2) finding that there was no similarity between the services covered by the mark applied for and those covered by the earlier marks on which the opposition was based. The court confirmed that there was no similarity between "real estate management and brokerage services", "building promoter services" and "development of usage concepts" in Class 36 of the Nice Classification on the one hand, and "financial services" in Class 36 on the other.

On June 4 2009 agri.capital GmbH filed an application for registration of the word mark AGRI.CAPITAL for services in Class 36, among others. After publication of the mark on December 2009, AgriCapital Corporation filed a notice of opposition on March 12 2010, under Article 41 of the Community Trademark Regulation (207/2009), against the registration of the trademark applied for in respect of all the services in Class 36. The opposition was based on two earlier Community word marks, namely AgriCapital (CTM 6192322) and AGRICAPITAL (CTM 4589339). Both of the earlier marks were registered for services in Class 36, and the mark AgriCapital was registered for "financial services; financial consultancy". The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of the regulation 207/2009.

By a decision of October 2 2012, the Opposition Division of OHIM rejected the opposition on the ground that the services covered by the trademark application and those covered by the earlier trademarks in Class 36 were different. On December 3 2012 AgriCapital filed an appeal with OHIM against the decision of the Opposition Division.

By a decision of July 10 2013, the Second Board of Appeal dismissed the appeal. It reached the conclusion that the services in Class 36 covered by the trademark applied for and those covered by the earlier trademarks were dissimilar. AgriCapital appealed.

Firstly, the General Court agreed with the board's finding that the attention of the relevant public, being an average consumer in all member states of the European Union, is high since the services designated by the marks generally involve substantial sums of money.

Secondly, the General Court examined the services at issue thoroughly. The Board of Appeal, and subsequently the General Court, divided those services into three groups, namely:

1. "building promoter services";
2. "real estate management and brokerage services"; and
3. "development of usage concepts".

The General Court concluded there was a lack of similarity between "real estate management and brokerage services" and "financial services", as "financial services" do not have the same nature, the same intended purpose or the same method of use as "real estate services". The General Court held that, although "real estate affairs" required financing, that was not enough to show that there was a close link between them and "financial services", and that they had, ultimately, only a remote and indirect relationship.

The General Court also concluded that there was a lack of similarity between "building promoter services" and "financial services". The court found that these services fall within two different sectors, and that they would not be provided by the same undertaking or by related undertakings and would not share the same distribution channels. Furthermore, the court rejected AgriCapital’s argument regarding the existence of a close link of complementarity between the services covered by the marks at issue, because, in a market economy, a substantial portion of activities require financing or investment, with the result that financial services might, by their nature, be associated with the majority of those activities. Therefore, it was held that the link between "building promoter services" and "financial services" was not, in itself, sufficiently close to lead the relevant public to think that those services are provided by the same undertaking

Furthermore, the General Court concluded that there was a lack of similarity between "development of usage concepts" and "financial services" by referring to the same arguments as those put forward concerning the similarity between "building promoter services" and "financial services".

As there was no similarity between the services, one of the criteria for the application of Article 8(1)(b) of the regulation was not satisfied and, consequently, the General Court found that there could not be a likelihood of confusion between the marks. The action was dismissed.

Lars Segato, Gorrissen Federspiel, Aarhus