Limited use of earlier mark sufficient for valid opposition

European Union

In Goutier v Office for Harmonisation in the Internal Market (OHIM) (Case T-387/10, February 2 2012), the General Court has rejected an appeal against the Fourth Board of Appeal’s partial refusal of a Community trademark (CTM) application.

In December 2005 Klaus Goutier, a German individual, applied to register ARANTAX as a CTM for services in Classes 35, 36 and 42 of the Nice Classification:

  • Tax consultancy, preparation of tax returns, book keeping, auditing, business consultancy (Class 35);
  • Preparation of tax assessments, mergers and acquisitions, namely financial advice with regard to sale and purchase of companies and company shares, wealth management (Class 36); and
  • Provision of legal services, legal research (Class 42).

In August 2006 Euro Data GmbH opposed the application for all of the services specified in the application under Article 8(1)(b) of the Community Trademark Regulation (40/94) (now 207/2009) based on an earlier German registration for the mark ANTAX covering services in Classes 35, 36, 41, 42 and 45:

"Auditing, structural advice, professional advice, HR advice, business advice; tax consultancy; publication of information bulletins and consumer information in printed form; continuing professional development training, training in accountancy and tax consultancy, seminars; legal services, tax advice, creation of computer programs."

The Opposition Division of OHIM considered that Euro Data had failed, at the request of the applicant, to prove use of ANTAX in relation to the services. It thus rejected the opposition. Euro Data appealed.

In July 2010 the Fourth Board of Appeal of OHIM partly annulled the decision of the Opposition Division and rejected the application for the majority of the services. The evidence filed by Euro Data was, in the board’s view, sufficient to prove use of the earlier mark and, except for wealth management, there would be a likelihood of confusion between the applicant's mark and the earlier mark for the services applied for.

The applicant appealed on two grounds:

  • breach of Articles 15 and 43 of the regulation due to Euro Data's failure to prove genuine use of the earlier mark; and
  • breach of Article 8(1)(b) due to an absence of likelihood of confusion between the two marks.

The applicant first considered that Euro Data had failed to prove genuine use of ANTAX in Germany within the preceding five years, which was a precondition of the opposition. The evidence submitted included:

  • six invoices for professional fees from 2004 to 2007 totalling €2277.09;
  • excerpts from the German trade register of tax consultants showing registration of ANTAX as a trading name;
  • extracts from the company’s website; and
  • a sworn witness statement from Karl-Heinz Siebenpfeiffer, an officer of the company.

In respect of the invoices, the applicant alleged that the absence of names or addresses of the recipients did not mean that services had not been supplied in a limited area or to related persons and companies. It also argued that book keeping and payroll accounting were not typically services supplied by a tax consultant, but by an accountant. Further, it felt that the low value of the invoices did not prove genuine use and that the use of the mark as the company’s trading name had no relationship with the services supplied. The applicant also stated that the extracts from the company’s website could not form the legal basis for proof of use and that the witness statement lacked relevance.

In contrast, OHIM and Euro Data argued that, when taken together, the evidence gave a clear and convincing impression of genuine use of the mark.

The court considered that the background to the witness statement, the circumstances of its creation, its purpose and its content all had to be verified to determine whether it was sensible and reliable. Given that the statement was given by an officer of the company, the court considered that it was not persuasive on its own, but had to be supported by other evidence.

The court moved on to consider the invoices which detailed the following activities: payroll accounting, assessment of taxable profits; assessment of income tax; calculation of annual tax returns relating to turnover; tax opinion; calculation of capital income; calculation of rental income. The court noted that the German tax law covered a broad range of services from book keeping to preparing financial statements for tax purposes, and permitted tax advisors to provide such services to their clients to assist compliance with tax and accounting obligations. The court confirmed that such services were covered by the invoices and that the extract from the trade register of tax consultants referred to such activities and, in particular, book keeping, payroll accounting, preparation of tax returns and business consultancy. Therefore, in contrast to the applicant's allegations, the invoices were in respect of typical services of a German tax advisor.

In response to the argument regarding the low value and non-disclosure of names on the invoices, the court held that it would not matter that the earlier mark was used in only a specific part of Germany, as there is no de minimis rule governing the level of use required.

The court emphasised that a trading name does not in itself distinguish services, but merely identifies a company. However, if the trading name is used in a way that establishes a link between the mark constituting the trading name and the services, then there will be use in relation to the services. Regarding the extracts from the company’s website, the court relied on the statements “we are tax consultants for health professionals” and “advice for doctors, dentists, pharmacists, carers” and “ANTAX – your specialist for health professionals” as evidence of the link between the mark as a trading name with the relevant services.

Therefore, the court confirmed that there was sufficient evidence of use of the earlier mark for tax consultancy services and rejected the first ground for appeal.

The applicant also alleged that the Board of Appeal had wrongly considered that the services and marks were similar. The board’s definition of the relevant public as company managers and officers as well as private individuals in Germany was not in issue.

The court considered that the services were identical or similar to the services in the registration. Taking each of the services in turn, the court held that:

  • “tax consultancy” is expressly included in the specification of the earlier mark and, therefore, such services are identical;
  • “preparation of tax returns” is part of the services of a German tax advisor and “preparation of tax assessments” is part of its role, so these services are identical;
  • “auditing” includes “tax consultancy”, since chartered accountants manage company tax returns and certify them, so such services are identical;
  • “business consultancy” is specifically referred to in the extracts of the trade register of tax consultants and, therefore, these services are identical;
  • “book keeping” is often offered by tax consultants (even if they do not undertake such activities personally) and such services are thus identical;
  • “mergers and acquisitions” fall within the broad role of German tax advisors, forming part of the range of advice offered by them, and so such services are similar; and
  • “legal services” and tax consultancy are similar, since tax advice is part of legal services and tax advice may require legal research.

The applicant further challenged the similarity of the marks due to their length and dissimilar first syllables. The General Court considered as follows:

  • The marks were of average visual similarity since, whilst admittedly of different lengths, they shared the 'antax' element, and the additional letters 'A' and 'R' at the start of the applicant’s mark had little importance compared to the other letters which were in the same order as those in the earlier mark.
  • The marks were of average phonetic similarity, since the earlier mark had two syllables and the applicant's mark had three syllables, but the first letters and last syllables were the same and these would be retained by the relevant public.
  • The marks were unable to be compared conceptually since they were invented words. On this point, the applicant raised the argument that 'tax' would be understood as meaning 'taxes' in English. The court did not accept this, but acknowledged that, even if it were accepted, this reinforced the likelihood of confusion rather than challenging it.

On the basis of the average visual and phonetic similarity of the marks and identical or similar services, and due to the imperfect recollection of the relevant public, the General Court considered that there would be a likelihood of confusion for these services. The appeal was thus rejected.

This case emphasises the relatively low threshold for proof of genuine use of an earlier trademark that is over five years old, confirming that there is no de minimis rule and that even limited use of a mark in respect of the relevant services may be an acceptable basis for an opposition.

Ellie Forrest-Charde and Chris McLeod, Squire Sanders (UK) LLP, London

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