JUDGMENT OF THE GENERAL COURT (First Chamber)
19 November 2025 (*)
( EU trade mark – Opposition proceedings – Application for EU figurative mark VC LAW – Earlier EU word mark vklaw – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑524/24,
Vassilev & Chisuse Law Firm, established in Sofia (Bulgaria), represented by Y. Blyahova, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Vayanos Kostopoulos Law Firm, established in Athens (Greece), represented by K. Terzis, lawyer,
THE GENERAL COURT (First Chamber),
composed, at the time of the deliberations, of I. Gâlea, acting as President, T. Tóth and S.L. Kalėda (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure, in particular the measure of organisation of procedure of 15 July 2025 and the replies of the applicant, EUIPO and the intervener lodged at the Registry of the General Court on 5, 5 and 6 August, respectively,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Vassilev & Chisuse Law Firm, seeks the annulment and alteration of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 August 2024 (Case R 0588/2023-1) (‘the contested decision’).
Background to the dispute
2        On 27 April 2021, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The mark applied for covered goods and services in Classes 16, 35 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, corresponding, for each of those classes, to the following description:
–        Class 16: ‘Advertising signs of paper; Advertising signs of cardboard; Printed publications; Annuals [printed publications]; Brochures; Information booklets; Printed brochures; Advertising pamphlets; White papers; Newsletters; Printed news releases; Bulletins; News bulletins; Catalogues; Display banners of paper; Manuals for instructional purposes; Educational publications; Educational books; Printed teaching materials; Periodicals; Newspapers; Informational letters; Law reports; Legal journals; Magazines [periodicals]; Professional magazines; Calendars; Printed informational cards; Printed matter; Printed questionnaires; Prospectuses’;
–        Class 35: ‘Operation of businesses [for others]; Business meeting planning; Assistance in business management within the framework of a franchise contract; Provision of assistance [business] in the operation of franchises; Business assistance relating to franchising; Assistance, advisory services and consultancy with regard to business organization; Providing assistance in the field of business organisation; Business management assistance for industrial or commercial companies; Providing assistance in the management of industrial or commercial enterprises; Management assistance to commercial companies; Assistance with business planning; Business administration and management; Professional consultancy relating to business management; Business management assistance; Advisory services for business management; Management assistance in the establishment of commercial undertakings; Planning concerning business management, namely, searching for partners for amalgamations and business take-overs as well as for business establishments; Efficiency experts; Business efficiency expert services; Business efficiency advice; Business inquiries; Business management consultancy; Assistance and advice regarding business management; Business management and organization consultancy; Operational business assistance to enterprises; Assistance and consultancy relating to business management and organisation; Assistance to industrial enterprises in the conduct of their business; Providing assistance in the field of business management; Providing assistance in the management of business activities; Management assistance for industrial organisations; Commercial assistance in business management; Business organization and operation consultancy; Advice relating to the organisation and management of business; Assistance and advice regarding business organisation and management; Business planning services; Business planning consultancy; Providing assistance in the field of business management and planning; Business acquisitions; Acquisition (Business -) searches; Business acquisitions consultation; Business management services relating to the acquisition of businesses; Business merger consultation; Business management services relating to the development of businesses; Career networking services; Online business networking services; Business organization consultancy; Assistance relating to business organisation; Business process re-engineering; Business process management; Business process management and consulting; Business project management services for construction projects; Writing of business project reports; Writing of business project studies; Management of business projects [for others]; Business relocation consulting; Business risk assessment services; Business risk management services; Risk management consultancy [business]; Advisory services relating to business risk management; Provision of business information relating to joint ventures; Business management and enterprise organization consultancy; Consultancy services regarding business strategies; Strategic business planning; Business strategy services; Business strategy development services; Business strategy and planning services; Commercial administration of the licensing of the goods and services of others; Commercial management; Business assistance, management and administrative services; Business assistance relating to business image; Corporate management consultancy; Management administration of commercial undertakings; Management and operation assistance to commercial businesses; Operation of commercial businesses [for others]; Consultations relating to business disposals; Commercial or industrial management assistance; Assistance to commercial enterprises in the management of their business; Business management advisory services relating to commercial enterprises; Advising commercial enterprises in the conduct of their business; Assistance to industrial or commercial enterprises in the running of their business; Business management organisation; Business brokerage services; Negotiation of commercial transactions for third parties; Management assistance in business affairs; Business advice relating to disposals; Administration of foreign business affairs; Assistance and advice regarding business organization; Business assistance relating to the establishment of franchises; Provision of assistance [business] in the establishment of franchises; Help in the management of business affairs or commercial functions of an industrial or commercial enterprise; Providing business management start-up support for other businesses; Preparation of documents relating to business; Consultancy relating to business document management; Preparation of audio and/or visual displays for businesses; Preparation of annual returns for business undertakings; Arranging of presentations for business purposes; Administrative data processing; Data processing for the collection of data for business purposes; Consulting in sales techniques and sales programmes; Information about sales methods; Benchmarking (evaluation of business organisation practices); Administration relating to business appraisal; Business organisation advice; Business advice relating to franchising; Business advice relating to financial re-organisation; Business advice relating to marketing; Marketing advice; Advice relating to the sale of businesses; Business management advisory services relating to franchising; Business advisory services relating to business liquidations; Assistance, advisory services and consultancy with regard to business analysis; Assistance, advisory services and consultancy with regard to business planning’;
–        Class 45: ‘Consultancy relating to trademark protection; Legal services relating to the registration of trademarks; Professional legal consultations relating to franchising; Legal advice relating to franchising; Consultancy services relating to the legal aspects of franchising; Consultation in relation to data protection compliance; Dispute resolution services; Provision of expert legal opinions; Industrial property consultancy; Industrial property management; Information services relating to consumer rights; Information, advisory and consultancy services relating to legal matters; Information services relating to trading standards; Information services relating to manufacturing standards; Legal research; Legal services for procedures relating to industrial property rights; Legal services in relation to the negotiation of contracts for others; Legal services in the field of immigration; Litigation advice; Legal services provided in relation to lawsuits; Legal services relating to company formation and registration; Legal services relating to the acquisition of intellectual property; Legal services relating to wills; Legal support services; Licensing [legal services] in the framework of software publishing; Legal advice and representation; Litigation consultancy; Expert witness services; Personal legal affairs consultancy; Preparation of legal reports; Pro bono legal services; Provision of information relating to legal services; Providing information relating to legal affairs; Legal information services; Providing information about legal services via a website; Providing information in the field of intellectual property; Providing information on agencies for copyright licensing; Providing information on industrial property rights; Providing information on issues concerning human rights; Information services relating to legal matters; Legal information research services; Reviewing standards and practices to assure compliance with laws and regulations; Intellectual property services; Intellectual property consultancy; Expert consultancy relating to legal issues; Advisory services relating to intellectual property rights; Copyright management consultation; Consultancy relating to copyright protection; Mediation; Legal assistance in the drawing up of contracts; Legal advice; Legal consultation in the field of taxation; Legal consultancy relating to intellectual property rights; Legal mediation services; Legal compliance auditing; Regulatory compliance auditing; Litigation support services; Alternative dispute resolution services [legal services]; Legal document preparation services; Alternative dispute resolution services; Legal services relating to business; Advisory services relating to consumers rights [legal advice]; Advisory services relating to copyright; Copyright (Professional advisory services relating to -); Advisory services relating to intellectual property licensing; Advisory services relating to intellectual property protection; Legal services relating to the negotiation and drafting of contracts relating to intellectual property rights; Advisory services relating to patents; Advisory services relating to the law; Arbitration services; Arbitration services relating to industrial relations; Arbitration, mediation and dispute resolution services; Arranging for the provision of legal services; Legal advocacy services; Company registration services; Consultancy relating to computer software licensing; Copyright protection; Consultancy relating to industrial property rights; Consultancy relating to intellectual property management; Consultancy relating to patent licensing; Consultancy relating to patent protection; Consultancy relating to the licensing of intellectual property; Consultancy relating to the management of intellectual property and copyright; Consultancy relating to the protection of geographical indications; Consultancy relating to the protection of industrial designs; Consultancy relating to the protection of new plant varieties; Consultancy relating to the registration of domain names; Registration of domain names [legal services]; Domain name advisory services; Consultancy relating to trademark licensing’.
4        On 10 August 2021, the intervener, Vayanos Kostopoulos Law Firm, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5        The opposition was based, inter alia, on the EU word mark vklaw, registered on 31 August 2018 under No 17735168 and covering goods and services in, inter alia, Classes 16, 35 and 45.
6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) 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 January 2023, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001.
8        On 20 March 2023, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.
9        By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision, reject the opposition and remit the application for registration back to EUIPO in order for it to proceed with its registration;
–        order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.
11      EUIPO contends that the Court should:
–        annul the contested decision in so far as it relates to the contested goods and services in Classes 16, 35 and 45, which are aimed exclusively at the professional public;
–        dismiss the action as to the remainder.
12      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility of the applicant’s claim that the case should be remitted back to EUIPO
13      EUIPO correctly submits that the third part of the applicant’s first head of claim, claiming that the Court should remit the case back to EUIPO, is inadmissible. It must be borne in mind that, in an action before the EU Courts against a decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with judgments of the EU judicature. It is therefore for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the Court’s judgments (see, to that effect, judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20).
The claims for annulment
14      The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
15      Article 8(1)(b) of Regulation 2017/1001 provides that, 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.
16      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 32 and the case-law cited).
17      For the purpose of applying Article 8(1)(b) of Regulation 2017/1001, 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).
18      In support of its single plea in law, the applicant disputes the Board of Appeal’s assessments concerning the relevant public’s level of attention, the comparison of the marks at issue and the global assessment of the likelihood of confusion. However, there is no need to call into question the Board of Appeal’s assessment that the goods and services at issue are at least similar and, for the most part, identical, which, moreover, is not disputed.
The relevant public
19      In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
20      The Board of Appeal noted, in paragraphs 20 to 23 of the contested decision, that the relevant public consisted of the general public and the professional public. It added that, in so far as the goods and services were aimed both at the general public and at the professional public, the lowest level of attention of those two groups had to be taken into account, which can vary from average to above average. However, in so far as some of the goods and services at issue were aimed exclusively at professionals, their high level of attention had to be taken into account.
21      According to the Board of Appeal, the goods and services aimed exclusively at professionals were ‘professional magazines’, ‘law reports’, ‘legal journals’, ‘printed teaching materials’, ‘advertising signs of paper’, ‘advertising signs of cardboard’, ‘advertising pamphlets’ and other types of advertising material, such as signs or brochures, in Class 16, all services in Class 35, and ‘consultancy relating to trade mark protection’, ‘legal services relating to the registration of trade marks’, ‘professional legal consultations relating to franchising’, ‘legal advice relating to franchising’, ‘consultancy services relating to the legal aspects of financing’, ‘industrial property consultancy’, ‘industrial property management’, ‘legal services for procedures relating to industrial property rights’, ‘legal services relating to company formation and registration’, ‘legal services relating to the acquisition of intellectual property’, ‘licensing [legal services] in the framework of software publishing’, ‘providing information in the field of intellectual property’, ‘providing information on agencies for copyright licensing’, ‘providing information on industrial property rights’, ‘intellectual property services’, ‘intellectual property consultancy’, ‘advisory services relating to intellectual property rights’, ‘copyright management consultation’, ‘consultancy relating to copyright protection’, ‘legal consultancy relating to intellectual property rights’, ‘legal mediation services’, ‘legal compliance auditing’, ‘regulatory compliance auditing’, ‘advisory services relating to intellectual property licensing’, ‘advisory services relating to intellectual property protection’, ‘legal services relating to the negotiation and drafting of contracts relating to intellectual property rights’, ‘advisory services relating to patents’, ‘arbitration services relating to industrial relations’, ‘company registration services’, ‘consultancy relating to computer software licensing’, ‘copyright protection, consultancy relating to industrial property rights’, ‘consultancy relating to intellectual property management’, ‘consultancy relating to patent licensing’, ‘consultancy relating to patent protection’, ‘consultancy relating to the licensing of intellectual property’, ‘consultancy relating to the management of intellectual property and copyright’, ‘consultancy relating to the protection of geographical indications’, ‘consultancy relating to the protection of industrial designs’, ‘consultancy relating to the protection of new plant varieties’ and ‘consultancy relating to trade mark licensing’ in Class 45.
22      In addition, the Board of Appeal found that, since the opposition was based on an earlier EU trade mark, the relevant territory was the European Union as a whole. It decided to base its assessment on the perception of the relevant public located in Poland and Bulgaria.
23      In so far as the applicant submits that the Board of Appeal disregarded the fact that the relevant public consisted of professionals and undertakings with a high level of attention, it is sufficient to note that that argument is based on a misreading of the contested decision. The Board of Appeal found, in paragraph 24 of the contested decision, that the level of attention of the professional public was high, in particular as regards the services in Class 35 aimed at a professional public with a user profile which is specialised or well-informed.
24      Furthermore, there is no reason to call into question the Board of Appeal’s definition of the relevant public, which, moreover, is not disputed.
The comparison of the signs
25      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of 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).
–       The distinctive and dominant elements
26      For the purpose of assessing the distinctive character of an element of 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, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (see 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 47 and the case-law cited).
27      It should be borne in mind that 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 that mark (see judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 53 and the case-law cited).
28      In the present case, first of all, the Board of Appeal found that, if the relevant public were to understand the word ‘law’, that element, which is common to the marks at issue, would be descriptive of some of the goods and services at issue. Next, it found that the applicant had not demonstrated that a substantial part of the relevant public in Poland and Bulgaria would be able to grasp the meaning of the element ‘law’. Consequently, the relevant public was likely to perceive the earlier mark ‘vklaw’ as a whole and as an invented term without any dominant element. The Board of Appeal concluded that that mark had a normal degree of distinctiveness. It found the same to be true of the mark applied for, despite the space between its word elements ‘vc’ and ‘law’. As regards the figurative element of the mark applied for, representing the head of a black canine or wolf, the Board of Appeal found that it was neither more nor less dominant than the word element of that mark.
29      The applicant claims that the Board of Appeal erred in finding that the relevant public would not understand the word ‘law’ and, consequently, in having given too much weight to that element, which is common to the marks at issue. According to the applicant, that word would also be understood by the public which does not have a good command of English or which speaks only Bulgarian or Polish as a native language, given that many law firms established in the European Union include that word in their firm names, domain names, marketing material and/or email addresses. That word is, moreover, from the basic English vocabulary. Accordingly, given that the word ‘law’ is descriptive for the relevant public, in the applicant’s view, the Board of Appeal should have given it minimal, if any, weight in the assessment of the marks at issue, whereas the element ‘vc’ should have been regarded as a dominant element in the mark applied for. Furthermore, the applicant submits that the Board of Appeal did not take sufficient account of the dominant character of the figurative element.
30      EUIPO disputes the applicant’s arguments in so far as they concern the general public. However, it submits that it is well known that the word ‘law’ is commonly used in the European Union in the context of the relevant goods and services aimed exclusively at the professional public, with the result that that public is likely to understand that word and perceive it as descriptive of those goods and services. The intervener disputes the applicant’s arguments.
31      It should be borne in mind that, according to settled case-law, comprehension of a foreign language cannot, in general, be assumed (see judgment of 14 July 2021, Cole Hann v EUIPO – Samsøe & Samsøe Holding (Ø), T‑399/20, EU:T:2021:442, paragraph 39 and the case-law cited).
32      However, it is apparent from the case-law that the relevant public is likely to understand a term in a foreign language inter alia where a sufficient knowledge of that language on the part of that public is a well-known fact (see, to that effect, judgment of 26 November 2008, New Look v OHIM (NEW LOOK), T‑435/07, not published, EU:T:2008:534, paragraph 22) or where the term in question has an equivalent in the language of the relevant public and a link may be made by that public between that term and its translation in the language concerned (see, to that effect, judgment of 29 April 2020, Kerry Luxembourg v EUIPO – Döhler (TasteSense), T‑109/19, not published, EU:T:2020:162, paragraph 68).
33      As regards, more specifically, English words, the Court has held that their comprehension by a non-English-speaking public could be assumed where those words form part of the basic vocabulary (see, to that effect, judgment of 29 April 2020, TasteSense, T‑109/19, not published, EU:T:2020:162, paragraph 65), when they are commonly used in relation to certain goods or services, with the result that the relevant public is capable of discerning their meaning on account of its frequent exposure to those terms (see, to that effect, judgments of 18 January 2023, YAplus DBA Yoga Alliance v EUIPO – Vidyanand (YOGA ALLIANCE INDIA INTERNATIONAL), T‑443/21, not published, EU:T:2023:7, paragraph 75, and of 22 January 2025, Fly Persia and Barmodeh v EUIPO – Dubai Aviation (flyPersia), T‑30/23, not published, EU:T:2025:54, paragraphs 31 to 33) or, in the case of a professional public, where English is frequently or normally used in the sector in question (see, to that effect, judgments of 29 March 2012, Kaltenbach & Voigt v OHIM (3D eXam), T‑242/11, not published, EU:T:2012:179, paragraph 26; and of 29 April 2020, TasteSense, T‑109/19, not published, EU:T:2020:162, paragraph 63; see also judgment of 21 December 2022, Pharmadom v EUIPO – Wellbe Pharmaceuticals (WellBe PHARMACEUTICALS), T‑644/21, not published, EU:T:2022:847, paragraph 30 and the case-law cited).
34      It should be noted, in the first place, that the English word ‘law’ is descriptive of the goods and services at issue which have a sufficiently close connection with the legal field. In that regard, as regards the goods at issue in Class 16, referred to in paragraph 21 above, namely those which, according to the Board of Appeal, are aimed exclusively at the professional public, it is common ground between the parties that that is the case with ‘legal journals’. The Court finds, as EUIPO submits, that that is also the case as regards ‘professional magazines’ and ‘law reports’. However, contrary to what EUIPO maintained in response to a measure of organisation of procedure, the same is not true of the other goods in Class 16, which do not have a sufficiently direct and specific connection with the element ‘law’, in that it is not obvious that the relevant public will perceive that element as referring, for example, to the area of specialisation of the provider of those goods. As regards the services referred to in paragraph 21 above, in Classes 35 and 45, it should be noted that they have a sufficiently close connection with the legal field, given that they are aimed at a specialised group of persons in need of professional advice in a regulated context, such as advice on various areas of intellectual property law or auditing services for regulatory compliance purposes. In that regard, the intervener’s arguments in response to a measure of organisation of procedure must be rejected, given that they are in no way substantiated as regards the services in Class 35 and do not call into question the connection between the services in Class 45 and the legal field.
35      As regards, in the second place, the question whether the relevant public is likely to understand that term, in accordance with the case-law cited in paragraphs 32 and 33 above, it should be noted, first, that the applicant does not dispute the Board of Appeal’s assertion that the relevant public’s knowledge of English in Poland and Bulgaria is not a well-known fact. It also does not dispute that there is no similarity between the English word ‘law’ and its Polish and Bulgarian equivalents.
36      Second, although it is apparent from the case-law that many consumers in the European Union know basic English vocabulary (see, to that effect, judgment of 29 April 2020, TasteSense, T‑109/19, not published, EU:T:2020:162, paragraph 64 and the case-law cited), the applicant merely submits that basic English vocabulary is known to the relevant public in Poland and Bulgaria, without substantiating its argument in such a way as to call into question the Board of Appeal’s finding that, as a legal term, the word ‘law’ is not part of that vocabulary.
37      Third, as regards the knowledge of the English word ‘law’ by the relevant public in Poland and Bulgaria, it is necessary, as EUIPO suggests, to distinguish between the general public and the professional public.
38      On the one hand, as regards the general public, the applicant has failed to demonstrate that that public will understand the meaning of the word ‘law’, for example, on account of its frequent exposure to that word. It merely claims that it is common to include that word in firm names, domain names, marketing materials and/or email addresses of law firms established in the European Union, without providing any evidence of that fact, or any other evidence capable of demonstrating that the general public is aware of that word. The mere reference to the fact that the applicant’s website and the intervener’s website were only available in English cannot be regarded as sufficient evidence.
39      On the other hand, as regards the professional public, it must be stated, as EUIPO correctly notes, that it is well known that Bulgarian and Polish legal professionals have completed a course of higher education during which they were necessarily exposed to the word ‘law’, for example when studying EU law or international law. In addition, as EUIPO also acknowledges, the understanding of that word can be assumed with regard to the professional business public that requires professional financial, legal or commercial advice or procedural assistance in specialised legal fields, such as franchising and intellectual property, on account of its frequent exposure to that term. That finding remains valid notwithstanding the fact that the professional public also includes undertakings from all market sectors, such as sole traders and small and medium enterprises (SMEs), operating on a local or national level, which may also need, for instance, business assistance or specialised legal consultancy in intellectual property matters. Therefore, the Board of Appeal erred in finding that a substantial part of the professional public in Bulgaria and Poland would not understand that word and would not perceive it as descriptive of the goods and services at issue.
40      That finding is not called into question by the intervener’s arguments that it cannot be assumed that English legal terminology is used in the daily activities of the professional public, in particular among the older generations or outside of major cities. Although it is a legal term, the word ‘law’ is not a specialised term, with the result that the professional business public is likely to be exposed to it. Last, that finding is not invalidated by the statistics relied on by the intervener, which relate to the knowledge of English by the general public in Bulgaria and Poland, and not by the professional public.
41      It follows that, for the professional public in Bulgaria and Poland, the word ‘law’ is descriptive in relation to the goods and services which have a sufficiently direct and specific connection with the legal field, referred to in paragraph 34 above. Consequently, to that extent, in accordance with the case-law cited in paragraphs 26 and 27 above and contrary to what was held, in essence, by the Board of Appeal, the element ‘law’ is not likely to make an impression on the professional public.
42      Furthermore, as regards the figurative element, the Board of Appeal correctly found that the mark applied for did not contain a dominant element, given that the figurative element is not more dominant than the word element.
–       Visual comparison
43      In paragraphs 52 to 57 of the contested decision, the Board of Appeal found that the word elements of the marks at issue were very similar, but that the figurative element of the mark applied for was visually striking. It concluded that the signs at issue were visually similar to an average degree.
44      The applicant submits that the degree of visual similarity of the marks at issue is low, given the difference in the presentation of the word elements, the presence of a figurative element in the mark applied for and the fact that the common element ‘law’ had to be rejected as descriptive and non-distinctive.
45      EUIPO disputes the applicant’s arguments in so far as they concern the general public, while maintaining that, for the professional public, the element ‘law’ is descriptive and therefore has a very limited impact on the visual comparison of the marks at issue. The intervener disputes the applicant’s arguments, claiming that, even if it were accepted that the element ‘law’ is descriptive, it must be taken into account, having regard, inter alia, to its size and its position in the marks at issue.
46      In that regard, in so far as concerns the general public, it must be stated, as the Board of Appeal found, that it will not grasp the meaning of the word ‘law’ and that it will perceive the word elements of the marks at issue as a whole. In that regard, the Board of Appeal correctly found that the word elements of the marks at issue were very similar, given that the word element of the contested mark ‘vc law’ consists of four letters identical to those of the earlier mark ‘vklaw’, which are in the same order. In addition, the Board of Appeal was entitled to find that the figurative element, although visually striking, could not overshadow the high visual similarity between the word elements of the marks at issue, and to conclude that the marks at issue were visually similar to an average degree. It follows that, as regards the general public, the Board of Appeal did not make any errors of assessment.
47      As regards the professional public, it will understand the meaning of the element ‘law’. In so far as that element is descriptive (see paragraphs 34 and 41 above), it must be given less weight, in accordance with the case-law referred to in paragraph 27 above, in the analysis of the similarity between the signs at issue, so that the professional public will pay more attention to the elements ‘vc’ and ‘vk’. The shorter a sign, the easier the public will be able to perceive each of its various elements (see judgment of 23 February 2022, Ancor Group v EUIPO – Cody’s Drinks International (CODE-X), T‑198/21, EU:T:2022:83, paragraph 31 and the case-law cited). Therefore, the Court considers that the degree of visual similarity is low. It follows that, as regards the professional public, the Board of Appeal made an error of assessment.
–       Phonetic comparison
48      The Board of Appeal found that the signs at issue were phonetically similar to a high degree.
49      The applicant submits that there is a strong phonetic difference between the word elements of the marks at issue, stating that the element ‘law’ will be recognised by the relevant public as descriptive and that the marks at issue will not be pronounced as a whole. In addition, the letters ‘c’ and ‘k’ produce very different sounds, which should be taken into account, particularly given the brevity of the marks at issue.
50      EUIPO disputes the applicant’s arguments in so far as they concern the general public, while claiming that, for the professional public, the element ‘law’ is descriptive and therefore has a very limited impact on the phonetic comparison of the marks at issue. The intervener disputes the applicant’s arguments, claiming that, even if it were assumed that the element ‘law’ is descriptive, not only the mark applied for, VC LAW, but also the earlier mark would be pronounced in two parts.
51      In that regard, in so far as concerns the general public, it is necessary to uphold the Board of Appeal’s assessment that the word elements of the marks at issue will be pronounced as a whole, with the difference in the sound of their second letters therefore having less weight, so that the overall phonetic perception of the marks at issue is very similar. Contrary to what the applicant claims, the element ‘law’ will not be perceived by the general public as descriptive. In addition, the Board of Appeal correctly noted that, in Slavic languages, it was common to encounter words with many consonants in a row. Furthermore, the applicant contradicts itself in that regard, in that the applicant itself states that the element ‘vklaw’ is likely to be pronounced as a whole. It follows that, as regards the general public, the Board of Appeal did not make any errors of assessment.
52      As regards the professional public, in accordance with the case-law referred to in paragraph 27 above, the element ‘law’ must be given less weight in the phonetic assessment of the signs at issue, in so far as that element is descriptive (see paragraphs 34 and 41 above). Although the intervener rightly submits that, in that case, the earlier mark would also be pronounced in two parts, the fact remains that, in so far as the element ‘law’ is descriptive (see paragraphs 34 and 41 above), the difference between the second letters of the marks at issue will have greater weight in their pronunciation. Therefore, the Court considers that the degree of phonetic similarity is average. It follows that, as regards the professional public, the Board of Appeal made an error of assessment.
–       Conceptual comparison
53      The Board of Appeal found that the word elements of the marks at issue did not evoke any concept, whereas the figurative element of the mark applied for would be associated with a concept of wolf or dog, with no conceptual equivalent in the earlier mark.
54      The applicant complains that the Board of Appeal failed to carry out a conceptual comparison of the marks at issue, to study the symbolism of the figurative element representing a canine head, which evokes protection, loyalty and strength, and to give that element due weight.
55      EUIPO and the intervener dispute the applicant’s arguments.
56      In that regard, it is sufficient to note that the Board of Appeal carried out a conceptual comparison of the marks at issue, in so far as it referred to the concept suggested, in its view, by the figurative element, and noted that that concept had no equivalent in the earlier mark. It cannot be criticised for not having interpreted the figurative element in accordance with the applicant’s expectations and for not having given greater weight to the concept which it conveys. It is unlikely that the relevant public will perceive the symbols evoked by the applicant in the figurative element of the mark applied for. It follows that the Board of Appeal did not make any errors of assessment in the conceptual comparison of the signs at issue.
The likelihood of confusion
57      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
58      The Board of Appeal found that there was a likelihood of confusion, having regard, in particular, to the normal distinctiveness of the earlier mark, the average degree of visual similarity, the high degree of phonetic similarity and the similarity of the goods and services at issue, or even the identity of most of those goods and services. It noted that the relevant public would perceive the word elements of the marks at issue, which have normal distinctiveness, as invented terms, and added, first, that even a highly attentive public could confuse the mark applied for with a new version of the earlier mark, modernised by the addition of a figurative element and, second, that the high degree of phonetic similarity was all the more important since the services in Classes 35 and 45 were often chosen on the basis of a recommendation given orally or by handwriting the name of the service provider.
59      The applicant claims that the Board of Appeal underestimated the significant conceptual and visual difference between the marks at issue. The mark applied for is more complex and distinctive than the earlier mark. In particular, the applicant claims that the Board of Appeal neglected the figurative element in the mark applied for.
60      EUIPO disputes the applicant’s arguments relating to the goods and services which are aimed at the general public. However, it endorses the applicant’s head of claim seeking annulment of the contested decision ‘to the extent that the goods and services aimed exclusively at [a] professional public are concerned’. According to EUIPO, given that the element ‘law’ is descriptive of the goods and services at issue which are aimed at a professional public and therefore has a very limited impact in the overall impression and the comparison of the signs, any likelihood of confusion on the part of the professional public can be excluded. The intervener disputes the applicant’s arguments.
61      In that regard, in so far as concerns, in the first place, the goods and services at issue which are aimed at the general public, it should be noted, as is apparent from paragraphs 46 and 56 above, the Board of Appeal duly took into account, inter alia, the figurative element in the analysis of both the visual and the conceptual similarity. Consequently, the applicant’s arguments alleging that the Board of Appeal incorrectly weighed the various elements of the marks at issue must be rejected.
62      In addition, first, the applicant’s argument that the relevant public is accustomed to law firms using abbreviations based on the names of their founders in their trade marks must be rejected, given that it is in no way substantiated. Second, as regards the applicant’s argument that the intervener did not use the earlier mark, it is sufficient to recall that the examination of the similarity of the signs at issue takes into consideration those signs in their entirety, as they have been registered or as they have been applied for (see, to that effect, judgment of 2 December 2009, Volvo Trademark v OHIM – Grebenshikova (SOLVO), T‑434/07, EU:T:2009:480, paragraph 37). Therefore, any actual or possible use of those signs is irrelevant for the purpose of examining their similarity.
63      It follows that, as regards the goods and services aimed at the general public, the Board of Appeal was entitled to conclude that there was a likelihood of confusion.
64      As regards, in the second place, the goods and services at issue which are aimed exclusively at the professional public, it should be noted that, in so far as the Board of Appeal erred in finding that the element ‘law’ was not descriptive for the professional public (see paragraphs 34 and 41 above), it overestimated the degree of visual and phonetic similarity (see paragraphs 47 and 52 above).
65      In that regard, it should be borne in mind that, where the earlier trade mark and the sign whose registration is sought coincide in an element that is weakly distinctive or descriptive with regard to the goods or services at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 will admittedly not often lead to a finding that that likelihood exists. However, it follows from the case-law that a finding that a likelihood of confusion exists cannot, because of the interdependence of the relevant factors, be ruled out in advance and in any event (see, to that effect, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 55 and the case-law cited).
66      In the present case, the fact that the marks at issue coincide in an element which is descriptive of the goods and services with a sufficiently direct and specific connection with the legal field, referred to in paragraph 34 above, has a significant impact on the visual and phonetic similarities. It follows that the difference in the respective second letters of the marks at issue and the figurative element of the mark applied for carry greater weight and that the similarities are not sufficient to outweigh the differences.
67      Therefore, as regards the goods and services with a sufficiently direct and specific connection with the legal field, referred to in paragraph 34 above, the Board of Appeal erred in finding that there was a likelihood of confusion and, to that extent, the application for annulment must be upheld. The application for annulment must be dismissed as to the remainder.
The claim for alteration
68      By the second part of its first head of claim, the applicant asks the Court, in essence, to adopt the decision which, in its view, EUIPO should have taken, namely to reject the opposition brought against the mark applied for. In doing so, the applicant requests that the Court exercise its power to alter decisions, as provided for in Article 72(3) of Regulation 2017/1001.
69      In that regard, it should be borne in mind that the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
70      In the present case, EUIPO correctly submits that the Board of Appeal, since it upheld the opposition in full, did not rule on the other grounds relied on in support of the opposition. Accordingly, given that the Court would be required to carry out an assessment on which the Board of Appeal has not yet adopted a position, the requirements for alteration of the contested decision are not fulfilled.
71      The application for alteration must therefore be rejected.
Costs
72      Under Article 134(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.
73      Since the action has been partly upheld, each party must be ordered to bear their own costs.
74      As regards the costs incurred by the applicant before the Board of Appeal, it will be for the Board of Appeal to rule, in the light of the present judgment, on the costs relating to the proceedings before it.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 August 2024 (Case R 0588/2023-1) in so far as it concerns goods and service in Classes 16, 35 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, corresponding, for each of those classes, to the following description:
–        Class 16: ‘Law reports; Legal journals; Professional magazines’;
–        Class 35: ‘Operation of businesses [for others]; Business meeting planning; Assistance in business management within the framework of a franchise contract; Provision of assistance [business] in the operation of franchises; Business assistance relating to franchising; Assistance, advisory services and consultancy with regard to business organization; Providing assistance in the field of business organisation; Business management assistance for industrial or commercial companies; Providing assistance in the management of industrial or commercial enterprises; Management assistance to commercial companies; Assistance with business planning; Business administration and management; Professional consultancy relating to business management; Business management assistance; Advisory services for business management; Management assistance in the establishment of commercial undertakings; Planning concerning business management, namely, searching for partners for amalgamations and business take-overs as well as for business establishments; Efficiency experts; Business efficiency expert services; Business efficiency advice; Business inquiries; Business management consultancy; Assistance and advice regarding business management; Business management and organization consultancy; Operational business assistance to enterprises; Assistance and consultancy relating to business management and organisation; Assistance to industrial enterprises in the conduct of their business; Providing assistance in the field of business management; Providing assistance in the management of business activities; Management assistance for industrial organisations; Commercial assistance in business management; Business organization and operation consultancy; Advice relating to the organisation and management of business; Assistance and advice regarding business organisation and management; Business planning services; Business planning consultancy; Providing assistance in the field of business management and planning; Business acquisitions; Acquisition (Business -) searches; Business acquisitions consultation; Business management services relating to the acquisition of businesses; Business merger consultation; Business management services relating to the development of businesses; Career networking services; Online business networking services; Business organization consultancy; Assistance relating to business organisation; Business process re-engineering; Business process management; Business process management and consulting; Business project management services for construction projects; Writing of business project reports; Writing of business project studies; Management of business projects [for others]; Business relocation consulting; Business risk assessment services; Business risk management services; Risk management consultancy [business]; Advisory services relating to business risk management; Provision of business information relating to joint ventures; Business management and enterprise organization consultancy; Consultancy services regarding business strategies; Strategic business planning; Business strategy services; Business strategy development services; Business strategy and planning services; Commercial administration of the licensing of the goods and services of others; Commercial management; Business assistance, management and administrative services; Business assistance relating to business image; Corporate management consultancy; Management administration of commercial undertakings; Management and operation assistance to commercial businesses; Operation of commercial businesses [for others]; Consultations relating to business disposals; Commercial or industrial management assistance; Assistance to commercial enterprises in the management of their business; Business management advisory services relating to commercial enterprises; Advising commercial enterprises in the conduct of their business; Assistance to industrial or commercial enterprises in the running of their business; Business management organisation; Business brokerage services; Negotiation of commercial transactions for third parties; Management assistance in business affairs; Business advice relating to disposals; Administration of foreign business affairs; Assistance and advice regarding business organization; Business assistance relating to the establishment of franchises; Provision of assistance [business] in the establishment of franchises; Help in the management of business affairs or commercial functions of an industrial or commercial enterprise; Providing business management start-up support for other businesses; Preparation of documents relating to business; Consultancy relating to business document management; Preparation of audio and/or visual displays for businesses; Preparation of annual returns for business undertakings; Arranging of presentations for business purposes; Administrative data processing; Data processing for the collection of data for business purposes; Consulting in sales techniques and sales programmes; Information about sales methods; Benchmarking (evaluation of business organisation practices); Administration relating to business appraisal; Business organisation advice; Business advice relating to franchising; Business advice relating to financial re-organisation; Business advice relating to marketing; Marketing advice; Advice relating to the sale of businesses; Business management advisory services relating to franchising; Business advisory services relating to business liquidations; Assistance, advisory services and consultancy with regard to business analysis; Assistance, advisory services and consultancy with regard to business planning’; and
–        Class 45: ‘Consultancy relating to trade mark protection; ‘Legal services relating to the registration of trade marks; Professional legal consultations relating to franchising; Legal advice relating to franchising; Consultancy services relating to the legal aspects of franchising; Industrial property consultancy; Industrial property management; Legal services for procedures relating to industrial property rights; Legal services relating to company formation and registration; Legal services relating to the acquisition of intellectual property; Licensing [legal services] in the framework of software publishing; Providing information in the field of intellectual property; Providing information on agencies for copyright licensing; Providing information on industrial property rights; Intellectual property services; Intellectual property consultancy; Advisory services relating to intellectual property rights; Copyright management consultation; Consultancy relating to copyright protection; Legal consultancy relating to intellectual property rights; Legal mediation services; Legal compliance auditing; Regulatory compliance auditing; Advisory services relating to intellectual property licensing; Advisory services relating to intellectual property protection; Legal services relating to the negotiation and drafting of contracts relating to intellectual property rights; Advisory services relating to patents; Arbitration services relating to industrial relations; Company registration services; Consultancy relating to computer software licensing; Copyright protection; Consultancy relating to industrial property rights; Consultancy relating to intellectual property management; Consultancy relating to patent licensing; Consultancy relating to patent protection; Consultancy relating to the licensing of intellectual property; Consultancy relating to the management of intellectual property and copyright; Consultancy relating to the protection of geographical indications; Consultancy relating to the protection of industrial designs; Consultancy relating to the protection of new plant varieties; Consultancy relating to trade mark licensing’;
2.      Dismisses the action as to the remainder;
3.      Orders Vassilev & Chisuse Law Firm, EUIPO and Vayanos Kostopoulos Law Firm each to bear their own costs.
Gâlea
Tóth
Kalėda
Delivered in open court in Luxembourg on 19 November 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.