The Legalworks brand is deemed to have sufficient distinctive character
The Legalworks brand is deemed to have sufficient distinctive character
The Legalworks brand is deemed to have sufficient distinctive character
The company Legal Works Nordics AB (Legal Works) applies for registration for the legalworks trademark with the Swedish Patent and Registration Office (PRV).
Legal Works sells recruitment as well as other similar services and legal training.
PRV states that a trade mark must have distinctive character in order to be registered under Chapter 1, section 4 of the Trademark Act (VML).
In this context, this means that the mark must be perceived as a characteristic that allows consumers to distinguish Legal Works services from those sold by other companies.
For example, a trade mark which only describes the nature of the services offered does not have distinctive character (Chapter 1, Section 5 of the VML).
The requirement of distinctive character is partly due to the fact that the fundamental function of trade marks is to distinguish the commercial origin of the services.
Another reason is that companies should be able to freely describe their services without risking infringement of a registered trademark.
PRV translates “legal works” into “legal” and “work” and “business” respectively.
It is therefore considered that the words represent a description of both the recruitment and legal services provided.
The mark is therefore not considered to have distinctive character and the application is rejected.
Patent and Market Court
Legal Works is appealing the decision to the Patent and Market Court (PMD), which thus has to examine the accuracy of prv’s decision.
As the basis for the appeal, the company states, inter alia, that PRV wrongly translated “legal works” into “legal works” or “legal services”, when it rather means “legal works”, “law works” or “legal factory”.
Furthermore, it is believed that the term “legal works” is not used in the industry where the company is active and thus is not descriptive for the services provided.
PMD states that the assessment of whether a mark is descriptive, and therefore lacks distinctive character, must be made on the basis of how it might be perceived by the public.
Furthermore, it is considered that the public of the services in question should be considered to be professional operators and consumers in general.
The PMD initially shares the PRV’s assessment that the translation closest to hand for the word “legal” is legal.
With regard to the word ‘works’, it is considered that it is not directly descriptive for the services in that it is a general concept that can be translated, among other things, into ‘work’, ‘activity’ or ‘deed’.
However, the court’s overall assessment is that the public would perceive the LEGALWORKS mark as descriptive of the legal services it offers.
However, it is not considered that the same applies to the rest of the company’s operations.
The Court therefore approves the registration of the trade mark in respect of recruitment and other such services, but not for legal training.
Patent and Market Court of Appeal
PRV is appealing to the Patent and Market Court of Appeal (PMÖD), claiming that the PMD’s decision to approve the registration should be annulled as it does not consider it sufficiently justified.
As regards the legal assessment, PMÖD initially states that the relevant provisions of vml must be interpreted in line with the case-law of the Court of Justice of the European Union.
According to the Court of Justice, if a word mark consists of different parts, such as LEGALWORKS, it is not sufficient for the different parts to be descriptive of the activity individually in order to prevent registration from being present.
What is crucial, instead, is whether the composition of the parts can be considered descriptive in nature.
Thus, the fact that the word “works” could be translated into “work” or “business” does not necessarily mean that LEGALWORKS is descriptive for recruitment services.
The assessment of the descriptive state of the trade mark must be made on the basis of the perception that the public may have.
PMÖD shares PMD’s view that the public should be considered to be composed of consumers in general and professional actors.
In order to determine the legalworks brand is descriptive for the company’s operations, PMÖD thus performs a linguistic analysis of how the word composition might be perceived by the public.
In assessing the words ‘legal’ and ‘works’ individually, the Court initially notes that they may have the meaning claimed by the PRV.
It is also considered that both translations of the word in question must be assumed to be known to the public.
However, on the basis of, inter alia, the Oxford English Dictionary, the Court finds that the composition of legalworks does not exist in the English language.
The words are also not usually used together in a way that describes the services in question.
In conclusion, PMÖD therefore finds that the word brand LEGALWORKS has distinctive character in relation to recruitment and such services.
Thus, there is no impediment to registration and PRV’s appeal is rejected.