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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Taxolutions v EUIPO - Haufe-Lexware (TAXMARC) (EU trade mark - Judgment) [2025] EUECJ T-1154/23 (14 May 2025) URL: https://www.bailii.org/eu/cases/EUECJ/2025/T115423.html Cite as: [2025] EUECJ T-1154/23, ECLI:EU:T:2025:487, EU:T:2025:487 |
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JUDGMENT OF THE GENERAL COURT (Second Chamber)
14 May 2025 (*)
( EU trade mark - Opposition proceedings - Application for EU word mark TAXMARC - Earlier EU figurative mark X TAXMAN - Relative ground for refusal - Article 8(1)(b) of Regulation (EU) 2017/1001 - Relevant public - Conceptual similarity )
In Case T‑1154/23,
Taxolutions BV, established in Sint-Michielsgestel (Netherlands), represented by R. Stoop, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Haufe-Lexware GmbH & Co. KG, established in Freiburg im Breisgau (Germany), represented by N. Hebeis, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, J. Schwarcz (Rapporteur) and W. Valasidis, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 28 November 2024,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Taxolutions BV, seeks the partial annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 October 2023 (Case R 131/2021-5) ('the contested decision').
Background to the dispute
2 On 4 April 2019, PricewaterhouseCoopers Belastingadviseurs N.V., the predecessor in title of the applicant, filed an application for registration of an EU trade mark with EUIPO in respect of the word sign TAXMARC.
3 The mark applied for covered goods and services in Classes 9, 35, 36, 42 and 45 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.
4 On 20 September 2019, the intervener, Haufe-Lexware GmbH & Co. KG, filed a notice of opposition to registration of the mark applied for in respect of some of the services in Class 35 and in respect of all the goods and services in Classes 9, 36 and 42. The goods and services which are the subject matter of the opposition ('the contested goods and services') correspond, for each of those classes, to the following description:
– Class 9: 'Computer software; software applications and web applications, including for smartphones, mobile telephones; computer software, computer software applications and web applications for administrative, financial and tax purposes; computer software extensions for providing existing computer software with additional functions; notebook computers, computers and media players; magnetic data carriers, recording discs; data processing equipment; electronic and digital publications, downloadable or on data carriers; apparatus for data processing; computers, peripheral devices for computers; parts of the aforementioned goods not included in other classes';
– Class 35: 'Business management; business administration; office functions; accountancy; accounting and book-keeping services; marketing services; market canvassing, market research and market analysis; business organisation, business economic and business administration consultancy; commercial intermediation services in the purchase and sale, and import and export of computer software, computer software applications and web applications, including for smartphones, mobile telephones, computer software, computer software applications and web applications for administrative, financial and tax purposes, computer software extensions for providing existing computer software with extra functions, and parts for the aforesaid goods; commercial intermediation services in the purchase and sale, and import and export of notebook computers, computers and media players, magnetic data carriers, recording discs, data processing equipment, electronic and digital publications being downloadable or stored on carriers, equipment for processing data, computers, computer peripheral devices and parts for the aforesaid goods; consultancy in the field of business management and business efficiency; compilation of statistics; accounting; tax preparation; compilation of fiscal data; strategic business planning; business analysis of fiscal data; temporary placement of personnel, including accountants and consultants; organisation of events for commercial and advertising purposes; compilation and management of data files; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet';
– Class 36: 'Financial services; financial affairs; monetary affairs; tax consultancy (not accounting); services rendered by financial experts; financial brokerage; financial analyses, expertise, studies and evaluations; conducting financial feasibility studies; financial management; drawing up financial reports; financial consultancy in relation to financial risk management; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet';
– Class 42: 'Scientific and technological services and research and design relating thereto; industrial analysis and research services; design, development, updating, implementing and providing of software, software packages, software applications, mobile applications and web applications; platform as a service [PaaS]; infrastructure as a service [IaaS]; software as a service [SaaS]; cloud computing; data storage and transmission; design, development and updating of computer systems, computer networks and computers; automation services; IT and ICP specialists; consultancy and information regarding the aforesaid services; including the aforesaid services provided via electronic networks, including the internet'.
5 The opposition was based on the EU figurative mark, registered on 7 September 2018 under number 17 869 061, covering goods and services in Classes 9, 16, 35, 38, 41 and 42, reproduced below:
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 On 24 November 2020, the Opposition Division partially upheld the opposition in respect of the contested goods and services in Classes 9, 35 and 42. By contrast, the opposition was rejected in respect of all the contested services included in Class 36, on the ground that those services were considered to be dissimilar to the services covered by the earlier mark.
8 On 20 January 2021, the applicant's predecessor in title filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 On 5 and 25 March 2021, the applicant's predecessor in title requested suspension of the opposition proceedings on the ground that it had filed an application for a declaration of invalidity against the earlier mark on which the opposition was based.
10 By decision of 21 July 2021, the Fourth Board of Appeal refused to suspend the opposition proceedings and dismissed the appeal in its entirety (Case R 131/2021-4).
11 By application lodged on 27 September 2021, the applicant's predecessor in title brought an action before the Court seeking the annulment of the decision of the Fourth Board of Appeal.
12 By its decision of 8 April 2022 (Case No 49 151 C), the Cancellation Division rejected the application for a declaration of invalidity brought by the applicant's predecessor in title against the earlier mark. On 20 July 2022, the parties were informed that that decision had become final.
13 On 2 May 2022, EUIPO was notified of the transfer of ownership of the mark applied for to the applicant.
14 By its judgment of 4 May 2022, PricewaterhouseCoopers Belastingadviseurs v EUIPO – Haufe-Lexware (TAXMARC) (T‑619/21, not published, EU:T:2022:270), the Court annulled the decision of the Fourth Board of Appeal, holding, inter alia, that the Board of Appeal, in its examination of the request for suspension, had committed a manifest error of assessment by failing to carry out a weighing up of the parties' competing interests. By contrast, the Court did not rule on the merits of the decision of the Fourth Board of Appeal concerning the opposition.
15 Following the annulment of the decision of 21 July 2021 of the Fourth Board of Appeal, the Fifth Board of Appeal of EUIPO adopted a new decision which, however, it revoked on the basis of the incomplete examination of certain evidence and which was replaced by the contested decision.
16 By the contested decision, the Board of Appeal partially upheld the appeal and annulled the decision of the Opposition Division, rejecting the opposition in respect of the services of 'organisation of events for commercial and advertising purposes' in Class 35, on the ground that those services were dissimilar to the goods and services covered by the earlier mark. As to the remainder, the Board of Appeal dismissed the appeal, concluding that there was a likelihood of confusion in respect of the other contested goods and services in Classes 9, 35 and 42. Lastly, as regards the contested services in Class 36, it found that the rejection of the opposition in respect of those services had become final, therefore there was no longer any need to rule on that matter.
Forms of order sought
17 The applicant claims that the Court should:
– annul the contested decision in so far as the applicant is adversely affected by it;
– order EUIPO to pay the costs of the present action and order the intervener to pay the costs of the proceedings before the Opposition Division and before the Board of Appeal.
18 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
19 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
20 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In essence, it complains that the Board of Appeal based its assessment of the likelihood of confusion on the perception of the public in Bulgaria and Hungary and erred in finding that the relevant public in those countries, on account of an insufficient knowledge of English, did not understand the meaning of the word sign 'taxman' or the term 'tax' and, therefore, did not perceive that sign as descriptive of the goods and services covered by the earlier mark.
21 EUIPO and the intervener dispute the applicant's arguments.
22 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
23 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public's perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
24 Lastly, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
25 The various claims raised by the applicant must be examined in the light of those principles.
The relevant public and territory
26 The Board of Appeal found, in paragraphs 76 to 79 of the contested decision, that the relevant public consisted of the professional public and the 'educated general consumer', and that its level of attentiveness was higher than average.
27 Specifically, as regards the goods and services included in Classes 9 and 42, the Board of Appeal found, in paragraphs 76, 77 and 79 of the contested decision, that the goods and services covered by the earlier mark were all limited to the fields of tax, economics and law. It deduced from that that the relevant public consisted of a specialised public, on the one hand, and the general public, but with a higher level of attentiveness, on the other hand.
28 As regards the services included in Class 35, the Board of Appeal found, in paragraph 78 of the contested decision, that they were all business-related services and were therefore targeted at professional consumers with a higher-than-average level of attentiveness.
29 Those assessments are not disputed and there is no need to call them into question.
30 Furthermore, the Board of Appeal found that, if the relevant public were that of the European Union, since the earlier mark was an EU trade mark, it would focus its examination on the Bulgarian and Hungarian public.
31 The applicant disputes that choice. According to it, the Board of Appeal could not rely on the perception of the Bulgarian and Hungarian public. By doing so, the Board of Appeal would allow a monopoly to be granted over non-distinctive English terms used in trade marks, in disregard of the 'objectives aimed at in the EU market', namely open and fair trade.
32 EUIPO and the intervener dispute the applicant's arguments.
33 In that regard, it should be noted that, according to the case-law, if, as in the present case, the earlier mark relied on in support of an opposition is an EU trade mark, Article 8(1)(b) of Regulation 2017/1001 does not require, for the mark applied for to be refused registration, that a likelihood of confusion must exist in all Member States and in all linguistic areas of the European Union. The unitary character of the EU trade mark means that an earlier EU trade mark can be relied on in opposition proceedings against any application for registration of an EU trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (see judgment of 20 March 2024, Sandhold v EUIPO – Grupo de Bodegas Vinartis (PATAPOUF), T‑540/23, not published, EU:T:2024:193, paragraph 38 and the case-law cited).
34 The applicant's argument that the approach of relying on the perception of the public in Bulgaria and Hungary is contrary to the 'objectives aimed at in the EU market' must be rejected. If an application for an EU trade mark is to be rejected if an absolute or relative ground for refusal exists in part of the European Union and it is therefore more difficult for an economic operator to obtain the registration of a sign as an EU trade mark than to obtain the registration of the same sign as a national trade mark, that is merely a corollary of the uniform protection enjoyed by an EU trade mark throughout the territory of the European Union (see, to that effect, judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 59).
35 In the light of the foregoing, the applicant's claim relating to the determination of the relevant public must therefore be rejected.
The comparison of the goods and services
36 In paragraphs 45 to 74 of the contested decision, the Board of Appeal compared the goods and services covered by the marks at issue in Classes 9, 35 and 42 and found that, with the exception of the services of 'organisation of events for commercial and advertising purposes' in Class 35, they were either identical or similar to varying degrees.
37 The applicant expressly states that it does not dispute that finding and there is nothing in the file capable of calling it into question.
The comparison of the signs
38 The applicant complains that the Board of Appeal erred in finding that the signs were similar.
39 EUIPO and the intervener dispute the applicant's arguments.
40 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by them, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
41 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgments of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43, and of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco), T‑498/18, EU:T:2019:763, paragraph 71).
The distinctive and dominant elements of the earlier mark
42 The Board of Appeal found, as regards the earlier mark, in essence, that the element 'X' was not descriptive, that the relevant Bulgarian and Hungarian public would not understand the element 'taxman' and that that mark was therefore co-dominated by those two elements.
43 According to the applicant, the word element 'taxman' cannot be considered to be co-dominant. It is descriptive and non-distinctive, as, moreover, confirmed by EUIPO in its decision on the application for cancellation of the earlier mark filed by the applicant's predecessor in title. That element is also descriptive for the public in Bulgaria and Hungary, which has sufficient knowledge of English in order to grasp its meaning. In that regard, the assertion, in the contested decision, that that public does not sufficiently understand that language is based solely on an assumption made by the Board of Appeal which none of the parties supported with evidence. The Board of Appeal erroneously excluded the extensive evidence adduced by the applicant with regard to the linguistic knowledge of the relevant public.
44 In any event, it is necessary to break down the element 'taxman' into two word elements, 'tax' and 'man', which are basic English terms understood by the relevant public. Thus, according to the applicant, the word element 'taxman' cannot be considered to be dominant and, therefore, the assessment of the likelihood of confusion cannot be carried out in relation to that element.
45 EUIPO and the intervener dispute the applicant's arguments.
46 With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgment of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 35).
47 Furthermore, owing to their low, or even very low, distinctive character, descriptive elements of a trade mark are not generally considered by the public to be dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see, to that effect, judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited).
48 In order to determine the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 27 and the case-law cited).
49 In the present case, the Cancellation Division of EUIPO, in its decision of 8 April 2022 (Case No 49 151 C), which has become final, found that, for the English-speaking public, the word element 'taxman' was descriptive of the goods and services covered by the earlier mark.
50 It is therefore necessary to establish whether, for the relevant public in Bulgaria and Hungary, the Board of Appeal's finding that that public, on account of its insufficient knowledge of the English language, does not understand the word element 'taxman' is free from an error of assessment.
51 According to settled case-law, knowledge of a language in a territory can be assumed only as regards the native language in that territory. Linguistic knowledge of a foreign language may exceptionally be regarded as a well-known fact and must, as to the remainder, be put forward and proved by the party on whom the burden of proof lies (see judgment of 23 September 2020, Brillux v EUIPO – Synthesa Chemie (Freude an Farbe), T‑402/19, not published, EU:T:2020:429, paragraph 28 and the case-law cited).
52 As EUIPO's representative pointed out at the hearing, the case-law has recognised four types of situations in which linguistic knowledge of a foreign language, in the present case English, may be regarded as a well-known fact.
53 First, a basic understanding of English on the part of the general public in certain Member States, such as, for example, the Scandinavian countries, is a well-known fact (see, to that effect, judgment of 20 October 2021, Roller v EUIPO – Flex Equipos de Descanso (Dormillo), T‑597/20, not published, EU:T:2021:722, paragraph 82 and the case-law cited).
54 Second, if the English terms have an equivalent in the language of the non-English-speaking public and a link may be established by that public between those terms and their translation into the language concerned, then that public must be held to understand their meaning (see judgment of 15 September 2021, Celler Lagravera v EUIPO – Cyclic Beer Farm (Cíclic), T‑673/20, not published, EU:T:2021:591, paragraph 46 and the case-law cited).
55 Third, many consumers in the European Union know basic English vocabulary, from which it can be assumed that that public understands terms forming part of basic English vocabulary (see judgment of 17 April 2024, Unilab v EUIPO – Cofares (Healthily), T‑288/23, not published, EU:T:2024:241, paragraphs 53 and 54 and the case-law cited).
56 Fourth, knowledge of a term in the English language may be assumed on account of the specific knowledge available to the consumers targeted by the goods and services concerned, in accordance with the use of English in certain sectors (see, to that effect, judgments of 27 November 2007, Gateway v OHIM – Fujitsu Siemens Computers (ACTIVY Media Gateway), T‑434/05, not published, EU:T:2007:359, paragraph 38, and of 26 September 2012, IG Communications v OHIM – Citigroup and Citibank (CITIGATE), T‑301/09, not published, EU:T:2012:473, paragraph 41).
57 Thus, according to the case-law, the use of English is common in the financial, electronics and telecommunications sectors (judgment of 26 September 2012, CITIGATE, T‑301/09, not published, EU:T:2012:473, paragraph 41), the English language is widely used in commercial life in general (judgment of 11 September 2014, Continental Wind Partners v OHIM – Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, not published, EU:T:2014:769, paragraph 56) and therefore the professional public might have a better understanding of English than the general public (judgment of 28 May 2020, Workspace Group v EUIPO – Technopolis Holding (UMA WORKSPACE), T‑506/19, not published, EU:T:2020:220, paragraph 42).
58 In the present case, it is necessary to consider whether, in the light of the specific knowledge of the consumers concerned within the meaning of the case-law cited in paragraph 56 above, knowledge of the word elements constituting the earlier mark may be assumed.
59 In that regard, it should be noted that the consumer, when perceiving a word sign, will break it down into elements which, for him or her, suggest a concrete meaning or which resemble words known to him or her (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 57 and the case-law cited).
60 In those circumstances, it is not decisive whether the relevant public understands the exact meaning of the term 'taxman' as 'tax collector', but it is necessary to examine whether that public understands the term 'tax', which would enable it to understand the word element 'taxman' as referring to tax.
61 In the present case, the Board of Appeal found in paragraph 78 of the contested decision, which is not disputed, that the services in Class 35 covered by the earlier mark were all business-related services and were therefore targeted at professional consumers. Those services relate, inter alia, to the fields of economics, tax, book-keeping and accounting, business management and personnel, and IT. As regards the goods and services in Classes 9 and 42 covered by the earlier mark, the Board of Appeal found in paragraphs 76, 77 and 79 of the contested decision, which is not disputed, that those goods and services were all limited to the fields of tax, economics and law.
62 It is thus apparent that the goods and services in Classes 9, 35 and 42 covered by the earlier mark concern fields close to those for which the case-law has recognised that English terms are commonly used, namely the financial, electronics and telecommunications fields.
63 Furthermore, as regards the goods and services intended for the general public in Classes 9 and 42, the Board of Appeal found, in paragraph 77 of the contested decision, that those goods and services were not intended for the general public as such but for a specialised public seeking to meet specific needs in the fields of tax, economics and law. As regards the services in Class 35, they are targeted, as has been pointed out in paragraph 61 above, at a professional public. In that context, it may therefore be assumed, in accordance with the case-law referred to in paragraph 57, that the relevant public in Bulgaria and Hungary will understand the term 'tax'.
64 As regards, in particular, the services covered by Class 35, it is necessary to reject the arguments put forward by the intervener's representative at the hearing, according to which the services in that class are targeted, inter alia, at 'marketing specialists' and that, in any event, account should be taken of the fact that professionals active in an economic field do not know the specific terms relating to other fields, such as, in the present case, the terms relating to tax.
65 The assertion by the intervener's representative that the services in Class 35 are targeted, inter alia, at 'marketing specialists' does not happen in practice, as is apparent from the list of those services covered by the earlier mark, reproduced below:
'Professional business organisational consultancy and information in the fields of economics, tax, data processing, book-keeping and accounting, business management, time management and personnel, including via the internet, included in Class 35; business management assistance, namely in the preparation of tax returns, payroll preparation, travel cost invoices, receivables lists, business plans, and in the recording and management of absences from work; outsourcing services in the field of IT and EDP, namely business assistance; collation, systemisation, updating and maintenance of data in databases and searchable online databases; organisational project management in the IT and EDP sector; mail order, including via online shops, of software products and printed matter.'
66 As has been pointed out in paragraph 61 above and as is apparent from the list reproduced in the preceding paragraph, the services covered by the earlier mark, which are in Class 35, relate, inter alia, to the fields of economics, tax, book-keeping and accounting, business management and personnel, and IT. Accordingly, on the one hand, it cannot be asserted that those services are targeted, inter alia, at 'marketing specialists'. On the other hand, professionals active in those fields are deemed to be commonly exposed to English terms, therefore the understanding of the term 'tax' can be assumed. That term, although not part of basic English vocabulary, is widely used in common language, particularly in those fields, and is not a term of which knowledge is limited to tax specialists, as the intervener's representative seemed to suggest.
67 It must therefore be concluded that the relevant public understands the meaning of the term 'tax'.
68 Consequently, on the basis of its understanding of the term 'tax', the relevant public will perceive the word element 'taxman' as referring to tax, even if that public does not understand the exact meaning of the element 'taxman'.
69 In those circumstances, it must be concluded that, by finding that the relevant public in Bulgaria and Hungary will not understand either the term 'tax' or the term 'taxman', the Board of Appeal vitiated the contested decision by making an error of assessment.
70 That error of assessment necessarily had an impact on the subsequent stages of the reasoning followed by the Board of Appeal in concluding that there was a likelihood of confusion, as EUIPO's representative acknowledged at the hearing.
71 In paragraphs 90 to 93 of the contested decision, the Board of Appeal rejected the applicant's argument that the word sign 'taxman' was allegedly descriptive, finding, first, that the Cancellation Division's assessment that that sign was descriptive of the goods and services covered by the earlier mark related to an English-speaking public and, second, that knowledge of a foreign language cannot be assumed. Furthermore, after having already concluded that there was a likelihood of confusion, the Board of Appeal also separately examined, in paragraphs 109 to 117 of the contested decision, the question of whether the common element 'tax' of the signs at issue was distinctive, finding that that was the case, on the basis of the fact that the relevant public in Bulgaria and Hungary did not understand that term.
72 Accordingly, on the basis of the incorrect premiss that the relevant public in Bulgaria and Hungary did not understand the term 'tax', the Board of Appeal did not consider whether that term should be regarded as allusive or descriptive of the goods and services covered by the earlier mark, as the Cancellation Division of EUIPO had found in its decision of 8 April 2022 (Case No 49 151 C).
73 Furthermore, in accordance with the case-law referred to in paragraph 47 above, descriptive elements of a mark, on account of their low, or even very low, distinctive character, are not generally considered by the public to be dominant in the overall impression conveyed by that mark.
74 Thus, the Board of Appeal did not examine whether the word element 'taxman', despite its possible allusive or descriptive character, could dominate, together with the element 'X', the impression of the earlier mark.
75 In the light of the foregoing, it must be held that the Board of Appeal's examination of the dominant elements of the earlier mark is vitiated by the error of assessment as regards the relevant public's understanding of the term 'tax'.
The comparison of the signs
76 In paragraphs 95 to 102 of the contested decision, the Board of Appeal held that the signs at issue were visually similar to an average degree and phonetically similar to a high degree, and that no conceptual comparison was possible on account of the lack of a clear and specific meaning of those signs.
77 The applicant, without raising specific arguments against the Board of Appeal's reasoning relating to the comparison of the signs, submits, in essence, that, in that comparison, the Board of Appeal gave too much importance to the element 'tax', which is common to the signs at issue, even though it is not distinctive.
78 In that regard, the Board of Appeal's assessment as regards the similarity of the signs at issue is based, in essence, on the incorrect finding that the relevant public in Bulgaria and Hungary will not understand the meaning of the common element 'tax' in those signs.
79 That error of assessment, in so far as it is capable of affecting the distinctive character of the element 'tax', which is common to the signs at issue, had an impact on the comparison of the signs, as carried out by the Board of Appeal.
80 The descriptive, non-distinctive or weakly distinctive elements of a complex trade mark generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression created by the mark (see judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 53 and the case-law cited). It follows that the degree of similarity resulting from the coincidence of the element 'tax' in the signs at issue may have been overestimated.
81 It should also be noted that, since the meaning of the element 'tax', which is common to the signs at issue, is capable of being understood by the relevant public in Bulgaria and Hungary, the Board of Appeal's conclusion that a conceptual comparison was impossible is vitiated by an error of assessment.
82 It must therefore be concluded that the error made by the Board of Appeal in finding that the relevant public in Bulgaria and Hungary could not grasp the meaning of the sign 'taxman' or the element 'tax' also vitiated the comparison of the signs carried out by the Board of Appeal.
The global assessment of the likelihood of confusion
83 The Board of Appeal concluded, in paragraphs 103 to 119 of the contested decision, that there was a likelihood of confusion in respect of the goods and services which it found to be identical or similar.
84 The applicant disputes that conclusion. In essence, it criticises, first, the assessment of the likelihood of confusion carried out by the Board of Appeal, claiming, inter alia, that the Board of Appeal should have taken account of the fact that the word sign 'taxman' or, at least, the term 'tax' were descriptive. Second, the applicant submits that giving too much importance to non-distinctive elements in the assessment of the likelihood of confusion should be avoided.
85 EUIPO and the intervener dispute the applicant's arguments.
86 As is apparent from the previous examination, the Board of Appeal made an error of assessment in finding that the relevant public in Bulgaria and Hungary could not grasp the meaning of the element 'taxman' or the element 'tax'. It was also found that that error vitiated the comparison of the signs carried out by the Board of Appeal.
87 In that regard, it must be held that, in paragraph 118 of the contested decision, the Board of Appeal found that it was appropriate to conclude that there was a likelihood of confusion, even if the common element 'tax' may have a 'somewhat lower distinctiveness for the Bulgarian public'.
88 As EUIPO correctly points out in its defence, excessive trade mark protection must be avoided if the signs at issue only coincide in non-distinctive or weakly distinctive elements but differ in their more distinctive elements. It should be borne in mind in that regard that, according to the case-law, where the elements of similarity between two signs arise from the fact that they share a component which has weak distinctiveness, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgment of 11 December 2024, Meica v EUIPO – Lénárd (CHIPSY KINGS), T‑157/24, not published, EU:T:2024:891, paragraph 66 and the case-law cited).
89 Accordingly, in the light of the error of assessment made by the Board of Appeal regarding the relevant public's understanding of the term 'tax', its impact when comparing the signs at issue and the principle of interdependence between the factors to be taken into account for the purposes of assessing the likelihood of confusion, it must be held that the Board of Appeal's assessment as to whether there is a likelihood of confusion is also vitiated.
90 In the light of all of the foregoing, the contested decision must be annulled in so far as it dismissed the appeal before it.
Costs
91 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings.
92 Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.
93 Furthermore, the applicant also claimed that the intervener should be ordered to pay the costs incurred during the appeal and opposition proceedings.
94 In that regard, first, it should be noted that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. It follows that the costs incurred for the purposes of the proceedings before the Opposition Division cannot be regarded as recoverable costs. Accordingly, the intervener must be ordered to pay the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal, while the form of order sought by the applicant must be rejected in so far as it requests that the intervener be ordered to pay the costs incurred before the Opposition Division.
On those grounds,
THE GENERAL COURT (Second Chamber),
hereby:
1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 October 2023 (Case R 131/2021-5) in so far as it dismissed the appeal brought by Taxolutions BV;
2. Orders EUIPO to pay the costs of the present proceedings;
3. Orders Haufe-Lexware GmbH & Co. KG to bear its own costs and to pay the costs necessarily incurred by Taxolutions for the purposes of the proceedings before the Board of Appeal.
Marcoulli | Schwarcz | Valasidis |
Delivered in open court in Luxembourg on 14 May 2025.
V. Di Bucci | M. van der Woude |
Registrar | President |
* Language of the case: English.
© European Union
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