JUDGMENT OF THE GENERAL COURT (Second Chamber)
20 March 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark CEFA Certified European Financial Analyst – Earlier EU word mark CFA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Coexistence of the marks)
In Case T‑213/23,
European Federation of Financial Analysts’ Societies (EFFAS), established in Frankfurt am Main (Germany), represented by E. Manresa Medina, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
CFA Institute, established in Charlottesville, Virginia (United States), represented by W. May, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, V. Tomljenović (Rapporteur) and R. Norkus, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
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, European Federation of Financial Analysts’ Societies (EFFAS), seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 February 2023 (Case R 1418/2022-1) (‘the contested decision’).
Background to the dispute
2 On 14 December 2015, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign CEFA Certified European Financial Analyst pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
3 The mark applied for covers goods and services in Classes 9 and 41 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 9: ‘Electronic educational publications in the field of financial analysis’;
– Class 41: ‘Provision of training and education; training services relating to finance, insurance, banking, accountancy, law, management; coaching (training); education services relating to business training; courses (training ‑) relating to finance, insurance, banking, accountancy, law, management; conducting training and educational seminars relating to finance, insurance, banking, accountancy, law, management; career information and advisory services (educational and training advice); educational advisory services; education examination; academic examination services organisation of examinations to grade level of achievement; educational testing; audio-visual display presentation services for educational purposes; organising of educational exhibitions, conferences, symposia; workshops for educational purposes; publication of educational texts, materials, educational matter; all the aforementioned services in the field of financial analysis’.
4 In view of the distinctiveness of the mark applied for acquired through use, for the purposes of Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001), the application was published in European Union Trade Marks Bulletin No 105/2017 of 6 June 2017.
5 On 6 September 2017, the intervener, CFA Institute, 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.
6 The opposition was based on, inter alia, the EU word mark CFA, which covers goods and services in Classes 16, 41 and 42 corresponding, for each of those classes, to the following description:
– Class 16: ‘Printed publications in the field of financial analysis and in support of the interests of financial analysts’;
– Class 41: ‘Educational services, namely arranging, conducting and providing courses of instruction, workshops, seminars, and conferences in the field of financial analysis and distributing course materials in connection therewith’;
– Class 42: ‘Association services, namely promoting the interests of financial analysts’.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).
8 By decision of 21 March 2019, the Opposition Division upheld the opposition in its entirety, finding that there was a likelihood of confusion between the mark applied for and the earlier mark which has been referred to in paragraph 6 above.
9 On 16 May 2019, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.
10 By decision of 31 March 2020, the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal on the basis of Article 8(1)(b) of Regulation No 207/2009, confirming that there was a likelihood of confusion between the mark applied for and the earlier mark.
11 On 13 June 2020, the applicant brought an action before the Court for annulment of the decision of the Fifth Board of Appeal which has been referred to in paragraph 10 above.
12 By judgment of 21 December 2021, EFFAS v EUIPO – CFA Institute (CEFA Certified European Financial Analyst) (T‑369/20, not published, EU:T:2021:921), the Court annulled the decision of the Fifth Board of Appeal and upheld the action on account of errors of law regarding the fact that the Board of Appeal, first, erred in finding that the level of attention of the general public was average in the context of the examination of the likelihood of confusion and, secondly, incorrectly failed to assess whether a series of marks, which the intervener had relied on in order to establish that there was a likelihood of association, existed.
13 By decision of 30 March 2022, the First Board of Appeal annulled the Opposition Division’s decision which has been referred to in paragraph 8 above and remitted the case to the Opposition Division in order for it to rule on the issue of the enhanced distinctiveness of the earlier mark and on the issue of whether a family of marks existed.
14 By decision of 9 June 2022, the Opposition Division upheld the opposition, finding that there was a likelihood of confusion between the mark applied for and the earlier mark and also finding that the earlier mark enjoyed enhanced distinctiveness acquired through use. It stated that, in those circumstances, it was not necessary to rule on whether a family of marks existed.
15 On 1 August 2022, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision which has been referred to in paragraph 14 above.
16 By the contested decision, the Board of Appeal dismissed the applicant’s appeal on the basis of Article 8(1)(b) of Regulation No 207/2009, finding that there was a likelihood of confusion between the mark applied for and the earlier mark. In essence, in the light of the identity or similarity of the goods and services at issue, the high degree of visual similarity, low degree of phonetic similarity and lack of conceptual similarity between the marks at issue and the enhanced distinctiveness of the earlier mark, the Board of Appeal found that there was, for the purposes of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion, including a likelihood of association, for the English-speaking part of the relevant public in the financial analysis sector in Germany and Spain, which displayed a high level of attention with regard to the goods and services at issue.
Forms of order sought
17 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
18 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
19 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The applicable substantive law
20 Given the date on which the application for registration at issue was filed, namely 14 December 2015, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
21 Consequently, in the present case, the references to Article 8(1)(b) of Regulation 2017/1001 which the applicant made in the arguments put forward must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.
Substance
22 In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In essence, it disputes, first, the similarity of the signs at issue, relying on visual, phonetic and conceptual differences and, secondly, it disputes the global assessment of the likelihood of confusion, stating that the Board of Appeal did not assess the peaceful coexistence of the mark applied for and the earlier mark in the European Union, even though EUIPO had found that the mark applied for had distinctive character acquired through use.
23 Article 8(1)(b) of Regulation No 207/2009 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.
24 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 33 and the case-law cited).
25 Lastly, 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).
26 It is in the light of those principles that the applicant’s various claims must be examined.
The relevant territory and the relevant public and its level of attention
27 As regards the relevant public, the Board of Appeal found that that public consisted of the general public interested in education and training in financial analysis and of the professional public with specific knowledge and expertise in the field of finance.
28 As regards the relevant public’s level of attention, the Board of Appeal stated, complying with the judgment of 21 December 2021, EFFAS v EUIPO – CFA Institute (CEFA Certified European Financial Analyst) (T‑369/20, not published, EU:T:2021:921), that that level of attention was high with regard to all the goods and services at issue. In that regard, the applicant’s claim that the general public’s level of attention is high with regard to the services in Class 41 has no bearing on the assessment of the relevant public’s level of attention, since it does not call the Board of Appeal’s assessment into question, the Board of Appeal having already found that the general public’s level of attention with regard to the services at issue was high.
29 As regards the relevant territory, the Board of Appeal found that that territory was the territory of the European Union. However, since the mark applied for contained English terms, the Board of Appeal chose to focus in its examination on the English-speaking part of the relevant public, which would understand the English expression ‘Certified European Financial Analyst’. Furthermore, in view of the Opposition Division’s finding, a finding which is not disputed by the applicant, that the earlier mark had enhanced distinctiveness through use in Germany and Spain, the Board of Appeal decided to base its assessment on the English-speaking part of the relevant public in the financial analysis sector in Germany and Spain. In that regard, the Board of Appeal stated that the use of English was common in the financial sector, relying on the judgment of 26 September 2012, IG Communications v OHIM – Citigroup and Citibank (CITIGATE) (T‑301/09, not published, EU:T:2012:473, paragraph 41). It found that, in those circumstances, the part of the relevant public in the financial analysis sector in Germany and Spain, which is familiar with the jargon in the financial sector and with English, understood the English terms in the mark applied for.
30 There is nothing in the case file which makes it possible to call into question those assessments of the Board of Appeal, assessments which are not, moreover, disputed by the applicant.
The comparison of the goods and services at issue
31 The Board of Appeal found, in essence, that the goods and services covered by the marks at issue were identical or at least similar. There is nothing in the case file which makes it possible to call into question that assessment, which is not, moreover, disputed by the applicant.
The comparison of the signs
32 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 this 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).
33 In the present case, the word signs to be compared are, on the one hand, the mark applied for, which consists of the elements ‘CEFA’ and ‘Certified European Financial Analyst’ and, on the other hand, the earlier trade mark, which consists of the element ‘CFA’.
34 First of all, as regards the distinctive elements of the signs at issue, it must be pointed out that the Board of Appeal found, on the one hand, that the earlier mark consisted solely of the sequence of capital letters ‘C’, ‘F’, ‘A’, which was meaningless. On the other hand, as regards the mark applied for, the Board of Appeal stated that the sequence of capital letters ‘C’, ‘E’, ‘F’ and ‘A’ would be perceived as being the acronym of the English terms ‘Certified European Financial Analyst’ and that that element was the most distinctive element of that mark. There is nothing in the case file which makes it possible to call into question those assessments, which are not, moreover, disputed by the applicant.
– The visual comparison
35 The Board of Appeal found, in paragraph 45 of the contested decision, that the marks at issue were visually similar to a high degree.
36 The applicant submits that the marks at issue are visually different since, first, the mark applied for contains more words and letters than the earlier mark and, secondly, the slight coincidence between the marks at issue with regard to some letters does not give rise to confusion on the market.
37 EUIPO and the intervener dispute the applicant’s arguments.
38 First, the Board of Appeal found that the element ‘CEFA’ would clearly be perceived as an acronym and that the element ‘CFA’ would most likely be perceived as an acronym. There is nothing in the case file which makes it possible to call into question those assessments, which are not, moreover, disputed by the applicant.
39 Secondly, it is common ground that the only element, ‘CFA’, in the earlier mark is included entirely in the element ‘CEFA’, which is the most distinctive element in the mark applied for. As the Board of Appeal correctly pointed out, the elements ‘CFA’ and ‘CEFA’ have three capital letters in common, namely ‘C’, ‘F’ and ‘A’, and differ solely in the presence of the additional capital letter ‘E’, which has no equivalent in the earlier mark. In that regard, it must be stated, on the one hand, that the beginnings and endings of the acronyms in question are identical. On the other hand, the capital letters ‘C’, ‘F’ and ‘A’ belonging to the sequences of letters in the signs at issue are placed in the same order, the capital letter ‘E’ in the mark applied for merely having been inserted between the first and the last two letters of the earlier mark. The capital letter ‘E’ thus merely has the effect of precluding the earlier mark and the element ‘CEFA’ in the mark applied for from being identical and does not offset the high degree of visual similarity which is apparent from the identity of the beginnings and endings of the signs at issue (see, to that effect, judgments of 9 December 2014, DTL Corporación v OHIM – Vallejo Rosell (Generia), T‑176/13, not published, EU:T:2014:1028, paragraph 82, and of 2 February 2017, Mengozzi v EUIPO – Consorzio per la tutela dell’olio extravergine di oliva toscano (TOSCORO), T‑510/15, EU:T:2017:54, paragraph 37). Consequently, contrary to what the applicant submits, there is a high degree of visual similarity between the groups of capital letters ‘CFA’ and ‘CEFA’ owing to the presence and the order of the letters concerned.
40 Thirdly, contrary to what the applicant claims, the Board of Appeal rightly found that the difference resulting from the additional word elements comprising the mark applied for would have only a very limited impact on the overall visual impression created by that mark and therefore on the visual comparison of the signs at issue. As is apparent from paragraph 34 above, the element ‘CEFA’ in the mark applied for will be perceived as the most distinctive element and as the acronym of the English expression ‘Certified European Financial Analyst’. It will thus be capable of being memorised independently. In those circumstances, the presence of the elements ‘Certified European Financial Analyst’ is not capable of eliminating the high degree of visual similarity resulting from the elements ‘CEFA’ and ‘CFA’ (see, to that effect, judgment of 24 September 2019, IAK – Forum International v EUIPO – Schwalb (IAK), T‑497/18, not published, EU:T:2019:689, paragraph 78).
41 The Board of Appeal was therefore right in finding that the signs at issue were visually similar to a high degree.
– The phonetic comparison
42 In paragraph 47 of the contested decision, the Board of Appeal found that the signs at issue were phonetically similar to a low degree.
43 Although the applicant admits that there is some phonetic similarity between the signs at issue, it claims that the element ‘CEFA’ in the mark applied for will ‘always’ be pronounced syllable by syllable (that is to say, in the present case, as two syllables), whereas the element ‘CFA’ in the earlier mark, which is a combination of letters that does not form a legible word, will be spelt out letter by letter. In this respect, it relies on examples of famous acronyms which illustrate that difference in pronunciation. Furthermore, the applicant submits, in essence, that, in view of the presence of the capital letter ‘E’ in the mark applied for, the signs at issue have a different rhythm and pronunciation and that they are therefore significantly different phonetically.
44 EUIPO and the intervener call into question the merits of those arguments.
45 First, on the one hand, the Board of Appeal was right in finding that only the element ‘CEFA’ in the mark applied for would be pronounced by the relevant public and not the elements ‘Certified European Financial Analyst’. The average consumer will tend to omit certain word elements of a mark comprising a number of elements in order to make it easier to pronounce, in particular in order to economise on words, if those elements are easily separable (see order of 21 December 2022, Suicha v EUIPO – Michael Kors (Switzerland) International (MK MARKTOMI MARKTOMI), T‑264/22, not published, EU:T:2022:861, paragraphs 56 and 57 and the case-law cited). In the present case, although the mark applied for also contains the elements ‘Certified European Financial Analyst’, it cannot be ruled out, in the light of the length of those elements, their separability and the fact that the element ‘CEFA’ corresponds to the acronym of the terms ‘Certified European Financial Analyst’, that the average consumer will refer to the mark applied for solely by means of the element ‘CEFA’, without pronouncing the other word elements in that mark.
46 On the other hand, as regards the pronunciation of the element ‘CEFA’, which is contained in the mark applied for, it may either be spelt out letter by letter, namely ‘c’, ‘e’, ‘f’, ‘a’, or, as the applicant claims, be pronounced as a single word consisting of two syllables, namely ‘ce’ and ‘fa’. However, contrary to what the applicant claims, consumers will not always pronounce the element ‘CEFA’ as a two-syllable word. That is only one of the possible ways of pronouncing it, as EUIPO correctly submits.
47 The applicant’s arguments relating to the pronunciation of acronyms such as SEAT, ASICS, IKEA, FIFA, FIAT, UEFA or UNICEF do not make it possible to call into question the assessments contained in paragraph 46 above. Although it is common practice to pronounce certain marks consisting of an acronym, as might be the case with regard to the marks SEAT, IKEA, FIFA and FIAT, that is not, however, an absolute rule which is applicable to marks consisting of acronyms. On the contrary, it must be pointed out, as is submitted by EUIPO, that certain well-known acronyms, such as HIV, UPS, WHO, USA, EU, ASAP or WIPO, may be pronounced by consumers letter by letter although they are capable of being read as a word. In those circumstances, even though part of the public might pronounce the element ‘CEFA’ as two syllables, it cannot be ruled out that that element, perceived as an acronym, would be spelt out letter by letter by a non-negligible part of the relevant public.
48 Secondly, as regards the pronunciation of the element ‘CFA’, the Board of Appeal was right in finding that the earlier mark would be pronounced letter by letter, a finding which is not disputed by the applicant.
49 Thirdly, as regards the phonetic comparison as such, the applicant’s claim that the letter ‘e’ alters the rhythm and sufficiently differentiates the signs at issue from a phonetic standpoint must be rejected. When the letters ‘c’, ‘e’, ‘f’ and ‘a’ are pronounced individually, it cannot be ruled out that the vowel ‘e’, which is pronounced after the consonant ‘c’, might be almost imperceptible. In that case, the sequence of letters ‘c’, ‘e’, ‘f’, ‘a’, which is present in the mark applied for, is phonetically similar to the sequence of letters ‘c’, ‘f’ and ‘a’, which constitutes the earlier mark. Consequently, for the part of the relevant public which pronounces the element ‘CEFA’ letter by letter, the degree of phonetic similarity is high, in the light of the fact that three of the sounds used in both of the marks are identical (those corresponding to the letters ‘c’, ‘f’ and ‘a’) and of the fact that the phonetic differences do not have a significant impact on their pronunciation. However, for the part of the public which pronounces the element ‘CEFA’ as if it were a two-syllable word, the degree of phonetic similarity is lower.
50 In those circumstances, contrary to what the Board of Appeal found, in paragraph 47 of the contested decision, it must be held that the degree of phonetic similarity is, as regards part of the relevant public, high.
– The conceptual comparison
51 The Board of Appeal found, in paragraph 49 of the contested decision, that the marks at issue were not conceptually similar.
52 The applicant submits that, since the level of attention of the relevant public is high, it will know the meaning of the acronym ‘CFA’ as being the contraction of the English terms ‘Chartered Financial Analyst’.
53 EUIPO and the intervener call into question the merits of those arguments.
54 First, as regards the meaning of the mark applied for, it is common ground between the parties that the element ‘Certified European Financial Analyst’ conveys a clear concept relating to a provider of certain services, a qualified expert in financial matters.
55 Secondly, as regards the earlier mark, it must be held, as the Board of Appeal found, that the sequence of capital letters ‘C’, ‘F’ and ‘A’ has no semantic content, with the result that that mark has no meaning.
56 The applicant’s arguments do not make it possible to call that finding into question. On the one hand, the applicant’s argument that the earlier mark CFA has a clear meaning for the relevant public, which has a high level of attention and which knows that the sequence of capital letters ‘C’, ‘F’ and ‘A’ is the acronym corresponding to the English expression ‘Chartered Financial Analyst’, must be rejected. According to settled case-law, the comparison must be made between the signs as they were registered or as they appear in the trade mark application, whether they are used alone or in conjunction with other marks or indications (see order of 18 October 2016, Laboratoire de la mer v EUIPO – Boehringer Ingelheim Pharma (RESPIMER), T‑109/16, not published, EU:T:2016:627, paragraph 45 and the case-law cited). In that regard, it must be stated that, since the earlier mark is registered only in respect of the element ‘CFA’, the assessment of the conceptual comparison can be carried out only in the light of that word element. For the same reasons, the applicant’s claim that the intervener relied on the fact that the element ‘CFA’ corresponds to the acronym of the English expression ‘Chartered Financial Analyst’ is not relevant for the purposes of the conceptual analysis of the earlier mark.
57 On the other hand, the references, in paragraphs 26 and 27 of the application, to two judgments of the Court of Justice and to a decision of EUIPO relate to the global assessment of the likelihood of confusion and are not relevant for the purposes of the assessment of the conceptual similarity of the marks at issue.
58 Thirdly, where one of the marks at issue has a meaning from the perspective of the relevant public and the other mark has no meaning, it must be held that those marks are conceptually dissimilar (see, to that effect, judgment of 19 September 2017, RP Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89). In those circumstances, the Board of Appeal was right in finding that the signs at issue were not conceptually similar.
59 It is apparent from all of the foregoing that the marks at issue, considered as a whole, are visually and phonetically similar to a high degree and are not conceptually similar.
The global assessment of the likelihood of confusion
60 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 low degree of similarity between those goods or services may be offset by a high 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).
61 The distinctive character of the earlier mark is one of the relevant factors which have been referred to in paragraph 60 above. The more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18).
62 Furthermore, the likelihood of confusion varies according to the level of attention which the relevant public displays. Consequently, according to the case-law, although the relevant public only rarely has a chance to compare the various marks directly and must therefore rely on ‘an imperfect recollection of them’, a high level of attention on the part of the relevant public can lead to the conclusion that it will not confuse the marks at issue despite the lack of any direct comparison between the various marks (see judgment of 13 July 2017, Migros-Genossenschafts-Bund v EUIPO – Luigi Lavazza (CReMESPRESSO), T‑189/16, not published, EU:T:2017:488, paragraph 86 and the case-law cited).
63 Lastly, the coexistence of two marks on a market might be taken into account since it is accepted in the case-law that it may, together with other elements, contribute towards diminishing the likelihood of confusion between those marks on the part of the relevant public. The lack of a likelihood of confusion may thus be inferred from the peaceful nature of the coexistence of the marks at issue on the market concerned (see, to that effect, judgment of 3 September 2009, Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 82). However, the possibility that the coexistence of the marks on the market could reduce the likelihood of confusion found to exist can arise only if, at the very least, during the proceedings before EUIPO, the party which is relying on the coexistence duly demonstrated, even if only by means of a body of consistent evidence, first, that that coexistence was based upon the lack of any likelihood of confusion on the part of the relevant public and, secondly, that the coexistence in question was based on actual use that was sufficiently longstanding for it to be able to influence the perception of the relevant consumer. Moreover, as regards the geographical scope of coexistence, where the opposition is based on an earlier EU trade mark and the coexistence of the marks at issue is relied on in support of there being no likelihood of confusion, it is for the party relying on that coexistence to establish proof of it throughout the European Union (see, to that effect, judgment of 27 January 2021, Turk Hava Yollari v EUIPO – Sky (skylife), T‑382/19, not published, EU:T:2021:45, paragraph 46 and the case-law cited).
64 In the present case, the Board of Appeal took into consideration, in paragraph 59 of the contested decision, the fact that the goods and services were identical or at least similar, that the earlier mark had enhanced distinctiveness and that the marks at issue were visually similar to a high degree, phonetically similar to a low degree and not conceptually similar, in order to conclude, in paragraph 63 of the contested decision, that there was a likelihood of confusion, including a likelihood of association, between the marks at issue for the relevant public, even taking into account the high level of attention of that public with regard to the goods and services concerned.
65 The applicant claims that the Board of Appeal did not correctly carry out a global assessment of the likelihood of confusion, on the basis of the overall impression created by the marks at issue, and that it erred in finding that there was a likelihood of confusion. First, the applicant submits, in essence, that the similarities between the marks at issue are insufficient to conclude that there is a likelihood of confusion. Secondly, it submits that the Board of Appeal failed to assess, for the purposes of the global assessment of the likelihood of confusion, the coexistence of the marks at issue on the market, although that factor is particularly relevant because EUIPO acknowledged that the mark applied for had distinctive character acquired through use. In particular, the applicant claims that the Board of Appeal failed to assess the evidence which it had adduced, in due time, in order to establish the coexistence of the marks at issue on the market. In that regard, it argues, first, that the marks have coexisted in the trade mark registers for more than 28 years and, secondly, that they have coexisted on the EU market for several years, as is shown by documents obtained from the Malta Financial Services Authority and the Financial Conduct Authority, the regulator in the United Kingdom of Great Britain and Northern Ireland.
66 EUIPO and the intervener dispute the applicant’s arguments. They submit, in essence, that the Board of Appeal’s finding relating to the existence of a likelihood of confusion is not vitiated by an error of assessment. Furthermore, EUIPO submits that, since it has not been demonstrated that the marks at issue coexisted before the date on which the mark applied for was filed, the Board of Appeal did not have to rule expressly on that argument in the contested decision and that it must be held that it had necessarily implicitly rejected it. It adds that, in accordance with the case-law, the Board of Appeal is not required to comment on each of the arguments or items of evidence relied on, but only to examine those having decisive importance for the outcome of the case in point. The intervener claims that the applicant merely asserts that that coexistence exists without providing proof of that coexistence throughout the territory of the European Union.
67 In the first place, as has been held in paragraph 59 above, the marks at issue, considered as a whole, are visually and phonetically similar to a high degree and are not conceptually similar. Furthermore, as has been held in paragraphs 28 and 31 above, the relevant public’s level of attention is high and the goods and services at issue are identical or at least similar. In addition, there is nothing in the case file which makes it possible to call into question the Board of Appeal’s finding that the earlier mark has enhanced distinctiveness on account of its intensive use in Germany and Spain with respect to all the goods and services referred to in paragraph 6, a finding which is not, moreover, disputed by the applicant.
68 Consequently, contrary to what the applicant claims, in the light of the identity or similarity of the goods at issue, the visual and phonetic similarities between the signs at issue, the high level of attention of the relevant public and the enhanced distinctiveness of the earlier mark, a likelihood of confusion between the marks at issue cannot, from the outset, be ruled out. However, since the applicant also relied on the peaceful coexistence of the marks at issue, as has been referred to in paragraph 65 above, such a peaceful coexistence constituted, as is apparent from paragraphs 60 to 63 above, a potentially relevant factor with regard to the assessment of the likelihood of confusion.
69 In the second place, in so far as the applicant complains that the Board of Appeal failed to examine the coexistence of the marks at issue on the market, it must be stated, first, that it had relied on the peaceful coexistence of the marks at issue in the written pleading which it filed before the Board of Appeal on 6 October 2022. It submitted, inter alia, that the marks at issue had been coexisting on the market for more than 28 years in various countries of the European Union. Furthermore, it is apparent from the documents in the case file that the applicant relied on the coexistence of the marks at issue throughout the administrative proceedings before EUIPO, namely both before the Opposition Division in 2017 and the Fifth Board of Appeal in 2019, and that it had submitted evidence seeking to show that coexistence. In that regard, it must be borne in mind that, in accordance with the case-law, it follows from the continuity in terms of functions between the various adjudicating bodies of EUIPO that, in matters within the scope of Article 76 of Regulation No 207/2009 (now Article 95 of Regulation 2017/1001), the Board of Appeal is required to base its decision on all the matters of fact and of law contained in the decision contested before it and on those which were introduced by the party, or parties, concerned either in the proceedings before the department which heard the application at first instance or, with the exception of submissions which have not been made in due time, in the appeal (see, to that effect, judgment of 7 December 2017, Coca-Cola v EUIPO – Mitico (Master), T‑61/16, EU:T:2017:877, paragraph 115 and the case-law cited).
70 It follows that the Board of Appeal was required to examine the applicant’s line of argument relating to the peaceful coexistence of the marks at issue as a factor to be taken into consideration in the assessment of the likelihood of confusion (see, to that effect, judgment of 21 July 2016, Ogrodnik v EUIPO – Aviário Tropical (Tropical), T‑804/14, not published, EU:T:2016:431, paragraphs 174 and 175), and thus to assess whether the applicant had succeeded in establishing that the conditions for taking into account peaceful coexistence, which have been set out in paragraph 63 above, were satisfied in the present case.
71 Secondly, it must be stated that the Board of Appeal did not examine the matter of the coexistence of the marks at issue on the market in question or respond to the applicant’s arguments in the contested decision. In that regard, in so far as EUIPO and the intervener contend that the applicant’s line of argument relating to coexistence is unfounded, on the ground, first, that it has not been demonstrated that the marks at issue actually coexisted before the date on which the mark applied for was filed and, secondly, that the applicant has not established that there has been coexistence throughout the territory of the European Union, it must be pointed out that there is nothing in the contested decision to indicate that the Board of Appeal examined the applicant’s line of argument and the evidence which it had submitted, let alone rejected them for those reasons.
72 Furthermore, EUIPO’s argument that the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning relied on by the parties must be rejected. It must be borne in mind that, in accordance with the case-law cited in paragraph 63 above, the peaceful coexistence of two marks on a particular market is a relevant factor for the purposes of the global assessment of the likelihood of confusion, since it cannot be ruled out that that coexistence may possibly, together with other elements, contribute towards diminishing the likelihood of confusion between those marks on the part of the relevant public.
73 Accordingly, contrary to what EUIPO submits, it cannot be held that the Board of Appeal implicitly, but necessarily, rejected the applicant’s line of argument alleging that the marks at issue coexisted on the market.
74 Consequently, the Board of Appeal vitiated its decision by an error of law in failing to assess the applicant’s line of argument relating to the coexistence of the marks at issue and to examine the evidence relied on in support of that line of argument. That error means that the Board of Appeal failed to examine a potentially relevant factor in the assessment of whether there was a likelihood of confusion between the mark applied for and the earlier mark (see judgment of 6 June 2018, Uponor Innovation v EUIPO – Swep International (SMATRIX), T‑264/17, not published, EU:T:2018:329, paragraph 83 and the case-law cited).
75 In those circumstances, the Court does not have all the information necessary to determine whether the global assessment of whether there was a likelihood of confusion, as carried out by the Board of Appeal in the contested decision, was well founded (see, to that effect, judgment of 6 June 2018, SMATRIX, T‑264/17, not published, EU:T:2018:329, paragraph 84 and the case-law cited).
76 It follows that the single plea must be upheld and, consequently, the contested decision must be annulled.
Costs
77 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
78 In the present case, since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
79 Pursuant to Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 February 2023 (Case R 1418/2022-1);
2. Orders EUIPO to bear its own costs and to pay those incurred by European Federation of Financial Analysts’ Societies (EFFAS);
3. Orders CFA Institute to bear its own costs.
Marcoulli | Tomljenović | Norkus |
Delivered in open court in Luxembourg on 20 March 2024.
V. Di Bucci | | S. Papasavvas |