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Do Intellectual Property Consultancy Services qualify as Legal Services? A Look at the PONTINOVA – PONTI decision of the General Court (T – 76/19)

The range of consultancy services in the field of intellectual property is quite wide. Lawsuits, appeals before registry offices, application services, monitoring services, licensing procedures and a variety of other services including but not limited to these are provided to clients by intellectual property consultancy firms or law firms specialized in this field.

Many companies operating in this field have specialized their services and several of them have limited their services and operate only as a law firm, several as a monitoring-research bureau, several as companies serving only in certain fields (patents, trademarks, copyrights, etc.), and others only in application-administrative procedures. Of course, there are also firms which provide all of these services on their own, but this should in general be considered as an exceptional form of service.

When firms that provide intellectual property consultancy services want to register their own trademarks, they apply under the Class 45 of the Nicé classification. The following data taken from TmClass database of the European Union Intellectual Property Office (EUIPO) show that all intellectual property services with the exceptions of education (Class 41) and financial valuation of intellectual property rights (Class 36) are included in Class 45. (https://euipo.europa.eu/ec2/search/find?language=en&text=intellectual+property&niceClass=&size =25&page=1&harmonised=true&searchMode=WORDSPREFIX&sortBy=relevance) In addition to this, as it can be seen in the last image, intellectual property related services in Class 45 are under the general title of legal services at the EUIPO Taxonomy structure. In other words, EUIPO considers intellectual property consultancy services as a part of legal services, and services such as intellectual property licensing services, intellectual property monitoring services, intellectual property management services, intellectual property investigation services and intellectual property protection services are considered to be a part of this main title.

Within the Turkish Patent and Trademark Office implementation, the classes of Nicé classification are divided into groups that contain the same type of goods and services. The purpose of the groups is to gather the same type (very similar) of goods or services under the same title and these groups are used only in the ex-officio similarity examination. However, in case of oppositions, the Office performs a broader examination for similar goods or services and is not limited with these groups which contain only the same type of goods or services.

One of the groups included in Class 45 is “Legal services (including consultancy services on industrial and intellectual property rights)” as of 2020 within Turkish implementation. (https://www.turkpatent.gov.tr/TURKPATENT/commonContent/MClassification/) In other words, the Turkish Patent and Trademark Office considers consultancy services in the field of intellectual property as a service within the general title of legal services and as the same type of service.

Nevertheless; when a new application involving legal services is refused due to a trademark registered for intellectual property consultancy (or vice versa), applicants often argue that services in the field of intellectual property and legal services, for example services of a lawyer, are not the same type of services, and that there is a difference between services in terms of purpose and service provider.

The arguments that are stated are based on the arguments that lawyering services are generally provided by lawyers or law firms, however, intellectual property services are a separate field of expertise, services provided in this field are not legal services, and mediating services for the application and protection before the administration cannot be considered as legal services, besides most of the service providers are not lawyers or legal professionals. In this context, the fact that the Turkish registration authority considers intellectual property consultancy services as a part of the general title of legal services comes up as an issue that is frequently criticized and underlined in appeals.

The judgement, which is the subject matter of this article; will convey to our readers how the same issue has been evaluated by EUIPO and the Court of Justice of the European Union and explain the EU perspective on the debates regarding this issue.

“PONTINOVA AG” established in Switzerland makes an application to EUIPO in 2016, requesting the registration of the trademark that can be seen below. The scope of the application is “Class 45: Legal services.”

“PONTI & PARTNERS, SLP”, resident in Spain, files an opposition to the application. The ground for opposition is the word mark “Ponti” registered in Spain, which is protected for “Class 45: Intellectual and industrial property consultancy services”.

The opposition division of EUIPO upholds the opposition, and the applicant files an appeal. Upon the refusal of the appeal by the EUIPO Board of Appeal, the applicant files a lawsuit against the decision and the case is heard by the General Court of the Court of Justice.

The General Court concludes the case with its judgement numbered T-76/19 of 13 May 2020. http://curia.europa.eu/juris/document/document.jsf?text=&docid=226465&pageIndex=0&doclang= EN&mode=lst&dir=&occ=first&part=1&cid=14766758

The General Court begins its judgment by establishing, after enumeration of the relevant case-law, that the relevant public is made up both of companies and individuals and that its level of attention is higher than average.

This is followed by the comparison of the services, namely legal services and intellectual and industrial property consultancy services, in other words, examining their similarities.

It was stated in the decision of the EUIPO Board of Appeal that the legal services in the application include the intellectual and industrial property consultancy services in the earlier trademark, and that therefore it should be accepted that the services at issue are identical.

The applicant objects to this finding. The applicant contends that the services covered by the mark applied for are neither identical nor highly similar to the services designated by the earlier mark. At this point, the applicant claims that the class of intellectual and industrial property services that were in Class 42 at the time the trademark was registered and later transferred to Class 45 and the legal services Class 45 are also different. In addition, according to the applicant, intellectual property consultancy services are not among the services provided by a law firm and that they are fundamentally different. The services of a law firm are to provide legal advice and to represent their clients before the courts, and that these services can only be provided by licensed lawyers. By contrast, intellectual property consultancy services are part of consultancy services, which are general services offered by a wide variety of professionals, such as professionals in the economic, financial or legal sphere, and do not require a license or particular training.

The General Court disputes the applicant’s arguments as follows:

The Nicé classification only serves administrative purposes, and simply because the goods or services are in different classes, goods and services may not be regarded as different on the ground that they appear in different classes under that classification. Additionally, intellectual property consultancy services, which were included in Class 42 at the time the disputed mark was registered now fall under Class 45, and therefore it is clear that the services covered by the marks are in the same class.

In addition, according to settled case-law, services can be considered identical when the services designated by the earlier mark are included in a more general category designated by the trademark application.

Moreover, intellectual and industrial property consultancy services include advice on intellectual property rights, which are legal in nature. Those services are therefore part of legal services, which cover a very wide range of services and are covered by the mark applied for, without being specified or limited.

The fact that legal consultancy services include other services such as representing clients before the courts, will not affect the justification of the above findings. In addition, although intellectual property consultancy services are provided by a wide range of professionals such as economic, financial or legal circles, this will not change the fact that these services have an absolute legal dimension.

The applicant’s argument that it does not provide legal services in the field of intellectual property will have no effect on the enquiry. As stated in the settled case law, the services included in the application will be taken into account, not the services actually marketed under those marks.

For all the aforementioned reasons, the arguments of the applicant that the services subject to examination are not the same in terms of their characteristics are not justified and the assessment by the Board of Appeal that the services covered by the marks are identical is justified.

In the continuation of the decision, the General Court came to the conclusion that the signs subject to comparison were similar to an average degree in visual and aural terms. The Board, taking into account both the similarity of the services and the average similarity of the signs, deduced that the leelihood of confusion between marks may arise. Accordingly, the decision of the Board of Appeal, which consisted of the same findings, was approved and the case was dismissed. (Since the main purpose of this article is to convey the findings on the similarity of legal services and that of intellectual property consultancy services, the General Court’s assessment on the similarity of signs is not included in the article.)

As it is clear from the decision, both the EUIPO Board of Appeal and the General Court considered legal services as a general category of services that include intellectual property consultancy services and dismissed the applicant’s arguments that these services were unsimilar.

Regardless of the nature of the person providing the service, the approach of the General Court, which takes into account the characteristic and legal dimension of the service, is appropriate in our opinion. In this context, a trademark attorney firm, which does not employ any lawyers and only provides trademark registration consultancy services, essentially provides a legal service and the interpretation based on the characteristic of the service rather than the service provider should be taken as a basis.

This approach can shed light on the discussions that we face in Turkey on the same discussions, and also supports the approach of the Turkish Patent and Trademark Office on the subject in terms of the conclusion that was reached.