General Court: Board of Appeal erred in finding that relevant public would not understand meaning of ‘tax’
9th July 2025
– The goods and services in Classes 9, 35 and 42 covered by the earlier mark concerned elds close to those for which case law has recognised that English is commonly used
– The relevant public would understand the meaning of ‘tax’ and perceive the element ‘taxman’ as referring to tax
– In light of the Board of Appeal’s error of assessment regarding the relevant public’s understanding of ‘tax’, its assessment of the likelihood of confusion was also vitiated
On 14 May 2025 the General Court issued its decision in Taxolutions BV v EUIPO (Case T‑1154/23). Taxolutions BV had sought the partial annulment of the decision of the EUIPO’s Fifth Board of Appeal dated 10 October 2023 (Case R 131/2021-5).
Background
On 4 April 2019 PricewaterhouseCoopers Belastingadviseurs NV, the predecessor in title of Taxolutions, led an application for registration of an EU trademark in respect of the word sign TAXMARC for goods and services in Classes 9, 35, 36, 42 and 45. On 20 September 2019 Haufe-Lexware led a notice of opposition in respect of some of the services in Class 35 and of all the goods and services in Classes 9, 36 and 42 based on the EU figurative mark reproduced below (No17 869 061), covering goods and services in Classes 9, 16, 35, 38, 41 and 42:
By judgment of 4 May 2022 (Case T‑619/21), the General Court annulled the decision of the Fourth Board of Appeal. The Fifth Board of Appeal adopted a new decision, 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. The Board of Appeal dismissed the appeal in respect of the other contested goods and services in Classes 9, 35 and 42. Lastly, as regards services in Class 36, it found that the rejection of the opposition in respect of those services had become nal.
Concerning the comparison of the services in Class 35, the General Court confirmed that there were all business-related and, therefore, targeted professional consumers with a higher-than-average level of attentiveness. The board had focused its examination on the Bulgarian and Hungarian public. There was no discussion as to whether the services were either identical or similar to varying degrees.
Concerning the comparison of the signs, the General Court first examined the distinctive and dominant part of the earlier mark. It found necessary to establish whether, for the relevant public in Bulgaria and Hungary, the Board of Appeal’s finding that the public, on account of its insufficient knowledge of the English language, did not understand the word element ‘taxman’ was free from an error of assessment – taking into account that the use of English is common in the financial, electronics and telecommunications sectors and the English language is widely used in commercial life in general.
It noted that consumers, when perceiving a word sign, will break it down into elements which suggest a concrete meaning or which resemble words known to them. In those circumstances, it was necessary to examine whether the relevant public understood the term ‘tax’, which would enable it to understand the word element ‘taxman’ as referring to tax.
It was apparent that the goods and services in Classes 9, 35 and 42 covered by the earlier mark concerned elds close to those for which case law has recognised that English terms are commonly used – namely, the nancial, electronics and telecommunications fields. It was therefore assumed that the relevant public in Bulgaria and Hungary would understand the term ‘tax’.
As regards the services covered by Class 35, Haufe-Lexware’s assertion that the services in Class 35 targeted “marketing specialists”, among others, did not happen in practice, as was apparent from the long list of those services covered by the earlier
The court concluded that the relevant public would understand the meaning of the term ‘tax’ and perceive the word element ‘taxman’ as referring to tax, even if that public did not understand the exact meaning of the element ‘taxman’. By nding that the relevant public in Bulgaria and Hungary would not understand either ‘tax’ or ‘taxman’, the Board of Appeal had vitiated its decision by making an error of assessment, which necessarily had an impact on the subsequent stages of the reasoning concluding that there was a likelihood of confusion.
On the basis of the incorrect premise that the relevant public in Bulgaria and Hungary did not understand the term ‘tax’, the Board of Appeal had not considered whether that term should be regarded as allusive or descriptive of the goods and services covered by the earlier mark. Further, 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. Therefore, 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.
The court thus found that the board’s examination of the dominant elements of the earlier mark was vitiated by the error of assessment as regards the relevant public’s understanding of the term ‘tax’.
In addition, the incorrect nding that the relevant public in Bulgaria and Hungary would 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.
Accordingly, in light of this error of assessment, its impact when comparing the signs at issue and the principle of interdependence, the court held that the board’s assessment as to whether there was a likelihood of confusion was also vitiated. The court thus annulled the board’s decision insofar as it had dismissed Taxolutions’ appeal.
This article first appeared on WTR Daily, part of World Trademark Review, in June 2025. For further information, please go to www.worldtrademarkreview.com.