In a recent judgment,(1) the Patent and Market Appeal Court (PMCA) highlighted the conceptual differences between the LEGALROOM and LEGALZOOM brands. The Court considered that the relevant Swedish public had a good knowledge of English and was therefore able to grasp the different meanings of “room” and “zoom”. The Court concluded that the visual and phonetic similarities between the marks did not outweigh their conceptual differences.
This is just one of the many recent judgments of Swedish courts in which the limited protection of the descriptive elements of an earlier mark by a mark has played a decisive role in the overall assessment of the likelihood of confusion.
In January 2019, a Swedish company applied for registration of the word mark LEGALROOM for goods and services in classes 9 and 45. The application covered, inter alia, legal services.
The plaintiff, a US company named LegalZoom.com, Inc, filed an opposition based on its previously registered word marks for LEGALZOOM (stylized as “LegalZoom” with a capital L and Z) in classes 35, 42 and 45, also covering legal services.
The Patent and Registration Office (PRV) concluded that there was no likelihood of confusion between the marks given the low distinctiveness of the term “legal” and since the terms “room” and “zoom Gave rise to different associations.
The claimant appealed the decision to the Patent and Market Court (CMP), which dismissed the appeal in its entirety and upheld the PRV’s findings. The PMC also considered that the conceptual differences may counteract the visual and phonetic similarities provided that at least one of the marks has a clear and specific meaning so that it can be immediately understood by the relevant public.
The claimant asked the PMCA to reverse the PMC’s decision.
The Court initially confirmed that both LEGALROOM and LEGALZOOM covered legal services in Class 45 and therefore identical services. In addition, the Court stated that the average user seeking legal advice should be considered to have a good knowledge of English as the words “legal”, “room” and “zoom” have a clear meaning.
Distinctive character of trademarks
As to the distinctiveness of the trademarks, the Court held that the two marks had somewhat diluted distinctiveness for legal services.
The Court then assessed the level of similarity between the marks. It stated that the two marks shared the initial element “legal” and that the marks differ in their second element, “room” and “zoom”, respectively, and that the meaning of these words should, as indicated above, be considered known to the public concerned.
Dominant element of brands
In determining the dominant element of trademarks, the Court stated that the shared “legal” element was considered a term commonly used to describe or refer to legal services. It therefore concluded that ‘room’ and ‘zoom’ were the distinctive and dominant elements of the marks.
Nonetheless, the Court indicated that although the word “legal” was found to be descriptive for the services in question, it could not be considered entirely negligible in the overall assessment.
Comparison of brands
In comparing the marks, the Court stated the following.
Visually, the marks coincided in the presence of the element “legal” and the last part of the words “room” and “zoom” (“oom”). In addition, the marks consisted of the same number of letters. The mark LEGALZOOM (stylized as “LegalZoom”) was registered with a capital L and Z, which affected the similarity of the marks, according to the Court.
Phonetically, the court said there were similarities, as the two marks shared the same number of vowels and consonants.
As for the conceptual comparison, the Court concluded that neither the composition “LEGALROOM” nor the composition “LegalZoom” existed in the English language. However, the words “room” and “zoom” had a clear and precise meaning for the relevant public. Therefore, the second elements of the marks – “room” and “zoom” – were sufficient to conceptually differentiate the marks.
In conclusion, the General Court stated that trademarks gave rise to different conceptual associations in the field of legal services, which to a large extent outweighed visual and phonetic similarities.
In its overall assessment, the General Court concluded that there was no likelihood of confusion between the marks in question. Therefore, the appeal was dismissed.
The outcome of this case is in line with existing Swedish case law, according to which descriptive elements enjoy minimal protection of the mark, even if the mark as a whole is distinctive enough to be registered. On the other hand, the trademarks registered in this case were very similar and can in fact be confused by careless consumers in the market.
The Court’s reasoning serves as an illustrative example that conceptual differences may outweigh visual and phonetic similarities. The decision also underlines the importance of choosing a strategically appropriate brand if the goal is to build a strong brand with broad legal protection.
Bearing in mind the principle of the unitary character of EU trade marks, it is worth considering whether the EU institutions would have come to the same conclusion in this case, given that the two earlier trade mark registrations used as grounds for opposition were protected by the EU Intellectual Property Office. (EUIPO) (one as an EU designation of an international registration and one as an EU trade mark).
The EUIPO Trademark Guidelines state that when it comes to the distinctiveness of an earlier registered mark as a whole, the earlier mark should always be considered to have at least a minimum degree of inherent distinctiveness. The question remains whether LegalZoom really appreciated this minimum qualification.
For more information on this topic, please contact Annalena Nordin or Joanna Wallestam at Westerberg & Partners Advokatbyrå Ab by phone (+46 8 5784 03 00) or by e-mail ([email protected] Where [email protected]). The Westerberg & Partners Advokatbyrå Ab website can be accessed at www.westerberg.com.
(1) PMÖÄ 11204-20.