General Court: services in Classes 35 and 36 present certain degree of similarity

In Sequoia Capital Operations LLC v Office for Harmonisation in the Internal Market (OHIM) (Case No T-369/14), the General Court has dismissed an appeal against the decision of the Fourth Board of Appeal of OHIM of March 18 2014 in the proceedings between Sequoia Capital LLP and Sequoia Capital Operations LLC, which involved an application for a declaration of invalidity of the Community word mark SEQUOIA CAPITAL (No 7465347) for services in Classes 35 and 36 of the Nice Classification.

The application for a declaration of invalidity of the abovementioned trademark was based on the prior Community word mark SEQUOIA, registered in Classes 9, 16 and 36, owned by Sequoia Capital LLP. By a decision of May 30 2013, the Cancellation Division of OHIM declared that the registration of the Community trademark (CTM) SEQUOIA CAPITAL was invalid for all the services covered, on the ground that there was a likelihood of confusion on the part of the relevant public, because of a very high similarity between the marks in question and the services provided under these marks.

On July 30 2013 the owner of the CTM SEQUOIA CAPITAL filed an appeal with OHIM against the decision of the Cancellation Division. By a decision of March 18 2014, the Fourth Board of Appeal of OHIM dismissed the appeal. The board concluded, in essence, that there was a likelihood of confusion between the marks at issue on the part of the relevant public. In particular, the board found that the services covered by the marks in question were similar because they concerned high-risk investments, with a possibility of high profitability, and which were for investors with the same risk profile. Furthermore, the Board of Appeal found that the signs at issue were highly similar and that the distinctiveness of their common element ‘sequoia’, which corresponded to the earlier mark, was average. It also concluded that consumers would presume that both types of investments, under an identical SEQUOIA mark, were offered by economically-linked undertakings.

In its judgment, the General Court confirmed that the decision of the Board of Appeal was correct. With regard to the comparison of the trademarks SEQUOIA CAPITAL and SEQUOIA, the court concluded that the marks were similar and that the element ‘capital’ in the contested mark would only be perceived as ancillary. Therefore, there was a high degree of similarity between the marks at issue, and such conclusion was not disputed by the owner of the contested mark.

As regards the services provided under the marks in question, the General Court stated that it was necessary to consider whether the services in Classes 35 and 36 covered by the contested mark were similar to the services in Class 36 covered by the earlier mark. The court found that the connection between these services was sufficiently evident, so that consumers were likely to think that they were provided by one and the same undertaking. Moreover, the court confirmed that services in Classes 35 and 36 may be perceived as similar to some extent.

The General Court concluded that there was a medium degree of similarity between the services at issue and a high degree of similarity between the marks themselves. Therefore, under these circumstances, there was a likelihood of confusion, despite the fact that the relevant public is very attentive. The court also stated that the distinctiveness of the earlier CTM SEQUOIA was average and insufficient to eliminate the risk of confusion with the trademark SEQUOIA CAPITAL.

Agnieszka Skrzypczak, Patpol, Warsaw