By: Pontus Sörlin
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LEGAL ROOM not confusing with LEGAL ZOOM
LEGAL ROOM not confusing with LEGAL ZOOM
In February 2019, Freja Partner AB (Freja Partner) will have the trademark Legalroom registered by the Swedish Patent and Registration Office (PRV).
Under Legalroom, Freja Partner offers various types of legal services.
The US company LegalZoom has been around since 2001 and offers legal advice online.
LegalZoom – which has its company name registered as a word trademark within the EU and internationally – object to the registration and asks for it to be revoked by prv.
The reason is that it is considered that there is a likelihood of confusion between Legalroom and its own brand, partly because of the similarity between the names and partly because they provide similar services.
A trade mark may not be registered if it is too similar to an earlier mark of Chapter 2, section 8 of the Trademark Act (VML).
The limit on when registration is unlawful is drawn when there is a likelihood of confusion between two brands, or if consumers may mistakenly believe that there is a link between two companies.
In order to determine whether that limit has been reached, an assessment must be made of the degree of equality between the marks and the services provided by the undertakings.
PRV further states that the similarity of services and trademarks affects each other; a high level of service means that the brand similarity needs to be lower for registration to be unlawful and vice versa.
The level of LegalZoom’s so-called distinctiveness is also relevant to the assessment according to PRV.
Distinctiveness may refer to a measure of how well the trade mark itself leads to consumers being able to distinguish the goods and services of a brand owner from those of others.
It may also mean that a trade mark has such a high recognition factor that it is perceived as a characteristic of the goods and services in question.
A high distinctiveness leads to stronger protection for the brand.
In terms of service equality, PRV notes that both marks relate to legal services and should therefore be placed in the same category.
It then proceeds to test the degree of brand similarity.
Since the only thing that separates the marks is the letters Z and R, it is judged that they have visual and phonetic similarity.
However, PRV considers that LegalZoom is thinking of targeting (zooming) into the legal, while Legalroom is rather perceived as a legal space, or a pun referring to the term law room.
According to PRV, the marks therefore differ in association.
LegalZoom’s distinctive character is then examined.
Since the word legal can simply be used to describe the type of services it provides, PRV considers that the trademark itself has very weak distinctiveness.
As a whole, however, the word LegalZoom has no real meaning, which is why the mark is considered to have a normal distinctive character due to a high recognition factor.
Overall, PRV’s assessment is that the services and trademarks are not so similar as to prevent registration and LegalZoom’s objection is rejected.
Patent and Market Court
LegalZoom appeals the ruling to the Patent and Market Court (PMD).
The Court initially adds certain additions to PRV’s assessment of the phonetic and visual similarity of the marks.
PMD states that conceptual differences may take similarities of the kind mentioned if at least one of the meanings of the marks is clear and determined for the consumers to whom either company is targeting.
PMD considers that the suffixes room and zoom are different concepts whose meaning is understood by the companies’ target group, which means that the phonetic and visual similarity between the brands is taken.
Nor is it considered that the word LegalRoom brings to mind the concept of legal space, but rather a room where legal services are performed.
Otherwise, the Court shares prv’s assessment and therefore does not consider that there is a risk of confusion, or that consumers should believe that the two companies are linked.
The appeal is therefore rejected and the registration of the LegalRoom trade mark persists.