JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
9 November 2022 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark CCB – Earlier EU figurative mark CB – Earlier international registration designating the European Union – Figurative mark CB – Relative grounds for refusal – No likelihood of confusion – Reputation and enhanced distinctiveness of the earlier mark – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) – Article 94(1) of Regulation 2017/1001)
In Case T‑639/21,
Groupement des cartes bancaires (CB), established in Paris (France), represented by C. Herissay Ducamp, 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
China Construction Bank Corp., established in Beijing (China), represented by C. Gommers, lawyer,
THE GENERAL COURT (Ninth Chamber),
composed, at the time of the deliberations, of M.J. Costeira, President, M. Kancheva (Rapporteur) and P. Zilgalvis, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 12 July 2022,
gives the following
Judgment
1 By its action based on Article 263 TFEU, the applicant, Groupement des cartes bancaires (CB), seeks annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 July 2021 (Case R 1305/2020‑2) (‘the contested decision’).
I. Background to the dispute
2 On 14 October 2014, the intervener, China Construction Bank Corp., filed an application for registration of an EU trade mark with EUIPO, 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)), for the following figurative sign:
3 The mark applied for covered services, following the restriction made in the course of the proceedings before EUIPO, in Class 36 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, and which correspond to the following description: ‘Banking; Financial evaluation (insurance, banking, real estate); Financing services; Credit card services; Deposits of valuables; Antique appraisal; Brokerage; Guarantees; Fiduciary’.
4 On 7 May 2015, the applicant filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
5 The opposition was based on the following earlier marks:
– the EU figurative mark registered on 12 November 1999 under number 269415 and reproduced below, covering services in Class 36 corresponding to the following description: ‘Insurance and finance, namely insurance underwriting, foreign exchange bureaux; issuing of travellers’ cheques and letters of credit; financial affairs, monetary affairs, banking; savings banks; management of banking and monetary flow by electronic means; electronic purse services; issuing of and services relating to prepayment cards, debit cards, credit cards, cash withdrawal cards, chip (integrated circuit) cards, magnetic cards and smart cards; issuing of bank cards, non-electronic; cash withdrawal using chip (integrated circuit) cards, electronic funds transfer; electronic payment; card payment services; prepaid card services; financial transactions by card holders via automated teller machines; authentification and verification of parties involved; financial information via all means of telecommunication; authorisation and regulation of payments by card numbers; remote secure payment; financial information, namely remote collection of financial information and data’:
– the international registration designating the European Union of the figurative mark registered on 16 October 2013 under number 1205323 and reproduced below, covering services in Class 36 corresponding to the following description: ‘Insurance and financial services, namely insurance underwriting; currency exchange bureaux; issuance of traveller’s checks and letters of credit; banking, financial and monetary operations; provident funds; electronic management of bank and monetary flows; cash card services; issuing of and services in connection with prepayment cards, payment, credit, cash withdrawal, chip or strip cards, magnetic cards and memory cards; issuance of non-electronic bank cards; cash withdrawal services by means of chip or magnetic strip cards; electronic funds transfer; electronic payment services; payment services by means of cards; pre-paid card services; financial transaction services for cardholders by means of automated teller machines; financial information services via all telecommunication media; authorisation and settlement services for payments made by credit card; electronic payment services, namely payment by card numbers; secure remote payment services; financial information services, namely remote collection of financial information and data’:
6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and in Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).
7 On 4 October 2016, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009.
8 On 5 December 2016, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By decision of 14 June 2017 (Case R 2265/2016‑1), the First Board of Appeal of EUIPO dismissed the appeal.
10 On 27 September 2017, the intervener brought an action before the General Court against the decision of the First Board of Appeal, registered as Case T‑665/17.
11 By judgment of 6 December 2018, China Construction Bank v EUIPO – Groupement des cartes bancaires (CCB) (T‑665/17, EU:T:2018:879), the General Court dismissed the intervener’s action.
12 By application lodged at the Registry of the Court of Justice on 14 February 2019, the intervener brought an appeal against the judgment of 6 December 2018, CCB (T‑665/17, EU:T:2018:879).
13 By its judgment of 11 June 2020, China Construction Bank v EUIPO (C‑115/19 P, EU:C:2020:469; ‘the judgment on appeal’), the Court of Justice set aside the judgment of 6 December 2018, CCB (T‑665/17, EU:T:2018:879), and annulled the decision of the First Board of Appeal of EUIPO referred to in paragraph 9 above.
14 On 25 June 2020, the Presidium of the Boards of Appeal referred the case back to the Second Board of Appeal as Case R 1305/2020‑2.
15 On 27 August 2020, the intervener requested leave to submit further observations on the impact of the judgment on appeal on the outcome of the dispute.
16 On 23 December 2020, and 9 March and 13 April 2021, following the request from the Rapporteur of 27 October 2020 to that end, the parties submitted new observations.
17 By the contested decision, the Second Board of Appeal annulled the decision of the Opposition Division and rejected the applicant’s opposition.
18 As a preliminary point, the Board of Appeal noted that, in taking the contested decision, it was required to have regard not only to the operative part of the judgment on appeal but also to the grounds constituting its essential basis.
19 The Board of Appeal then examined the ground of opposition referred to in Article 8(1)(b) of Regulation No 207/2009. In that regard, it stated that the relevant public consisted of both professionals and the general public, whose level of attention was high, and that the relevant territory was that of the European Union. It found that the services in Class 36 covered by the mark applied for were identical to the services in the same class covered by the earlier marks. The Board of Appeal took the view, in essence, that, after the judgment on appeal, due to the ‘radical stylisation’ of the earlier marks, the view had to be taken that the relevant public would not immediately recognise the letters ‘c’ and ‘b’ within them, with the result that the signs at issue had to be regarded as visually dissimilar and that it was not possible to compare them phonetically and conceptually. The Board of Appeal concluded, on the basis of the absence of any similarity between the signs at issue, that one of the conditions referred to in Article 8(1)(b) of Regulation No 207/2009, namely the condition relating to the identity or similarity of the marks at issue, was not met, with the result that there could be no likelihood of confusion within the meaning of that provision, irrespective of the enhanced distinctiveness of the earlier marks or the identity of the services at issue.
20 Lastly, the Board of Appeal examined the ground of opposition referred to in Article 8(5) of Regulation No 207/2009. It was also on the basis of the absence of similarity between the signs at issue that it found that one of the conditions referred to in that provision was not met and that it rejected the opposition in so far as it was based on that ground.
II. Forms of order sought
21 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs and the costs for ‘all previous proceedings’.
22 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
23 The intervener contends that the Court should:
– uphold the contested decision;
– order the applicant to pay the costs and the costs of the proceedings before the Second Board of Appeal.
III. Law
A. The determination of the applicable regulation ratione temporis
24 Given the date on which the application for registration at issue was filed, namely 14 October 2014, which is decisive for the purpose 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). Moreover, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
25 Consequently, in the present case, as regards the substantive rules, the references made to Article 8(1)(b) and Article 8(5) of Regulation 2017/1001 by the parties in their written pleadings must be understood as referring to Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, which are essentially identical in content.
B. Admissibility of the evidence produced for the first time before the General Court
26 EUIPO disputes the admissibility of Annex A 17 to the application on the ground that it was produced for the first time before the General Court.
27 In that regard, it must be observed that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, with the result that it is not the Court’s function to review the facts in the light of evidence produced for the first time before it (see, to that effect, judgments of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19, and of 15 March 2018, La Mafia Franchises v EUIPO – Italy (La Mafia SE SIENTA A LA MESA), T‑1/17, EU:T:2018:146, paragraph 16).
28 The review of legality must therefore be carried out in the light solely of the evidence which was produced during the administrative proceedings before EUIPO as it appears in the latter’s case file (see, to that effect, judgment of 13 May 2020, Divaro v EUIPO – Grendene (IPANEMA), T‑288/19, not published, EU:T:2020:201, paragraph 70).
29 In the present case, it is sufficient to note that Annex A 17 to the application, which contains a press release dated 29 September 2021 on the history of the CB logo, was submitted for the first time before the General Court, with the result that it must be declared inadmissible, in accordance with the case-law cited in paragraph 27 above.
C. Substance
30 In support of the action, the applicant relies on three pleas in law. The first alleges infringement of the first sentence of Article 94(1) of Regulation 2017/1001. The second alleges infringement of Article 8(1)(b) of Regulation No 207/2009. The third alleges infringement of Article 8(5) of Regulation No 207/2009.
1. The first plea in law, alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001
31 In the context of its first plea, the applicant submits, in essence, that the contested decision is vitiated by an insufficient statement of reasons as regards the comparison of the signs at issue and, more specifically, the assessment of the relevant public’s perception of the earlier marks, thereby infringing the first sentence of Article 94(1) of Regulation 2017/1001.
32 In the first part of that plea, it submits that ‘the Board [of Appeal] has not sufficiently explained its position and [that] the few arguments it gives are incomprehensible’.
33 In the second part of that plea, it criticises the Board of Appeal on the ground that it ‘[contradicted] itself suddenly and without any intelligible explanation’.
34 EUIPO and the intervener dispute the applicant’s arguments.
35 According to the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are required to state the reasons on which they are based. That obligation to state reasons has the same scope as that under Article 296 TFEU and Article 41(2)(c) of the Charter of Fundamental Rights of the European Union, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. That obligation has two purposes: first, to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights, and second, to enable the Courts of the European Union to exercise their power to review the legality of the decision (see, to that effect, judgment of 8 March 2018, Cinkciarz.pl v EUIPO (€$), T‑665/16, not published, EU:T:2018:125, paragraph 15 and the case-law cited).
36 The question as to whether the statement of reasons meets those requirements must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 19 December 2019, Sony Interactive Entertainment Europe v EUIPO – Vieta Audio (Vita), T‑690/18, EU:T:2019:894, paragraph 47 and the case-law cited).
37 In addition, when a decision has been adopted in a context with which the interested party is familiar, it can be reasoned in a summary manner (see, to that effect, judgment of 12 May 2011, Région Nord-Pas-de-Calais and Communauté d’agglomération du Douaisis v Commission, T‑267/08 and T‑279/08, EU:T:2011:209, paragraph 44). Moreover, the reasoning may be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (judgment of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 55).
38 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal failed to comply with its obligation to state reasons.
39 As regards the first part of the present plea, it must, first of all, be observed that the Board of Appeal stated, in paragraph 22 of the contested decision, that it was required, in accordance with Article 72(6) of Regulation 2017/1001, to have regard not only to the operative part of the judgment on appeal but also to the grounds constituting its essential basis.
40 Next, it must be stated that the Board of Appeal noted, in paragraph 49 of the contested decision, that the General Court had held, in essence, that the First Board of Appeal had been able to rely on the reputation of the earlier EU trade mark in France and, therefore, to rely on the significance of the awareness of the link which that mark establishes with the bank cards defined by the applicant’s acronym CB, in order to deduce from this that the relevant public, in that Member State, would perceive the earlier EU trade mark as being the word element ‘cb’ and that it had therefore been irrelevant that, in a previous decision in Case R 149/2004‑1, that Board of Appeal, on the basis of a relevant territory not including France and without taking into consideration the reputation of the earlier mark, had taken the view that the relevant public would not perceive the earlier mark as representing the capital letters ‘C’ and ‘B’.
41 It should also be stated that the Board of Appeal noted, in paragraph 50 of that decision, that, in the judgment on appeal, the Court of Justice had nevertheless ruled that, by holding that the First Board of Appeal of EUIPO had been entitled to infer from the reputation and highly distinctive character of the earlier EU mark that it would be perceived by the relevant public as consisting of the word element ‘cb’, that that word element was dominant and that it must dominate the assessment of the similarity of the signs at issue, the General Court had erred in law.
42 Lastly, the Board of Appeal took the view, in paragraphs 51 to 55 of the contested decision, that, after the judgment on appeal, the General Court’s ‘irrelevant’ consideration as to the decision in Case R 149/2004‑1 – namely, the finding that it was irrelevant that, in that decision, the Board of Appeal, by relying on a relevant territory not including France and without taking into consideration the reputation of the earlier mark, had taken the view that the relevant public would not perceive the earlier mark as representing the capital letters ‘C’ and ‘B’ – did not apply any more, with the result that that decision did become relevant, and stated that it adopted the same position in the contested decision. It concluded that, since the letters ‘c’ and ‘b’ of which the earlier marks consist had been ‘radically stylised’, they were no longer easily discernible, with the result that it was the figurative element resulting from the stylisation that had to be regarded as dominant. It found that, due to their stylisation, the relevant public would not immediately recognise the earlier marks as consisting of the letters ‘c’ and ‘b’. According to the Board of Appeal, in order to recognise those letters, the relevant public would have to engage in an imaginative cognitive process in order to ‘decipher’ the figurative element, which would mean that it would engage in an analysis which goes far beyond what may reasonably be expected of it in a purchasing situation.
43 Therefore, it must be held that, contrary to what the applicant claims, the Board of Appeal provided a sufficient statement of reasons for its position concerning the assessment of the relevant public’s perception of the earlier marks.
44 With regard to the applicant’s argument alleging a lack of clarity in the statement of reasons in paragraph 51 of the contested decision – according to which, in essence, after the judgment on appeal, the General Court’s ‘irrelevant’ consideration as to the decision in Case R 149/2004‑1 did become relevant in the present case – it must be stated, as the intervener submits, that that assessment has to be read in the light of those set out in paragraphs 39 to 50 of that decision. In order to arrive at that conclusion, the Second Board of Appeal stated that the General Court had held that the First Board of Appeal had been able to rely on the reputation of the earlier EU trade mark in the context of the assessment of the relevant public’s perception of that mark and that it had therefore been irrelevant that, in the decision in Case R 149/2004‑1, on the basis of a territory not including France and without taking the reputation into consideration, the First Board of Appeal had taken the view that the relevant public would not perceive that earlier EU mark as representing the capital letters ‘C’ and ‘B’, but the Court of Justice had nevertheless, in essence, ruled that, in doing so, the General Court had erred in law. It was in that context that the Second Board of Appeal found that, after the judgment on appeal, the decision in Case R 149/2004‑1 did become relevant. Accordingly, that argument of the applicant must be rejected.
45 It is also necessary to reject the applicant’s argument that, instead of comparing the signs according to the applicable rules recalled by the Court of Justice, the Board of Appeal simply shifted the blocks of the case-law, without providing precise arguments concerning the present case. In that regard, it should be observed that, although the Board of Appeal stated, in paragraph 53 of the contested decision, that it was adopting the same position as that adopted in the decision of the First Board of Appeal in Case R 149/2004‑1, it carried out its own assessment in paragraphs 53 to 55 of that decision. It took the view, in essence, that, due to the ‘radical stylisation’ of the earlier marks, the relevant public would not immediately recognise the letters ‘c’ and ‘b’ of which they consist, with the result that their dominant element was the figurative element resulting from the stylisation.
46 It follows that the statement of reasons in the contested decision is clear and sufficient, first, to enable the applicant to challenge the merits of the assessments made by the Board of Appeal, which, moreover, it did in paragraphs 36 to 72 of the application, and, second, to provide the General Court with sufficient material for it to exercise its power of review.
47 Accordingly, the first part of the applicant’s first plea in law must be rejected as unfounded.
48 As regards the second part of the present plea, and more specifically the applicant’s argument that the Board of Appeal contradicted EUIPO’s earlier position ‘without any intelligible explanation’, it must be stated that, contrary to what the applicant claims, the Board of Appeal explained, in paragraphs 49 to 53 of the contested decision, that, in essence, following the judgment on appeal, it adopted, as regards the relevant public’s perception of the earlier marks, the same position as that adopted in Case R 149/2004‑1; that position was different from that adopted by the General Court, which the Court of Justice had held to be incorrect. Thus, the applicant cannot criticise the Board of Appeal for having contradicted EUIPO’s earlier position ‘without [providing] any intelligible explanation’ in that regard.
49 In so far as, by its line of argument, the applicant claims that the Board of Appeal ‘[contradicted] itself suddenly’ and breached the principle of legal certainty, since, in the applicant’s submission, EUIPO had never considered that the decision of the First Board of Appeal in Case R 149/2004-1 was relevant in the present case, the Board of Appeal had contradicted EUIPO’s position in the latter’s response before the General Court in Case T‑665/17, according to which, in essence, the reputation of the earlier mark had been used only as an additional argument, and EUIPO had found, in several previous decisions, that the earlier marks corresponded to the letters ‘c’ and ‘b’, it must be stated that, in reality, the applicant is criticising the Board of Appeal for failing to follow EUIPO’s earlier position concerning the assessment of the relevant public’s perception of the earlier marks and not for failing to provide sufficient reasoning for its decision.
50 It should be recalled that the obligation to state reasons is an essential procedural requirement which must be distinguished from the question whether the grounds given are correct, the latter being a matter going to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, the latter will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgments of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 35 and the case-law cited, and of 14 July 2017, Sata v EUIPO (4600), T‑214/16, not published, EU:T:2017:501, paragraph 59 and the case-law cited). Claims and arguments intended to deny that the measure at issue is well founded are thus irrelevant in the context of a plea alleging the lack or inadequacy of a statement of reasons (see, to that effect, judgment of 12 May 2011, Région Nord-Pas-de-Calais and Communauté d’agglomération du Douaisis v Commission, T‑267/08 and T‑279/08, EU:T:2011:209, paragraph 45 and the case-law cited).
51 Therefore, the question whether the Board of Appeal could, without erring, adopt a position contrary to that previously adopted will be analysed in the context of the second plea in law and the arguments put forward in that regard in the context of the present plea must be rejected as ineffective.
52 Accordingly, the second part of the applicant’s first plea in law must be rejected as in part unfounded and in part ineffective.
53 In the light of all of the foregoing, the applicant’s first plea in law must be rejected.
2. The second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
54 In its second plea, the applicant claims, in essence, that the Board of Appeal committed errors in its comparison of the signs at issue and in its assessment of the likelihood of confusion.
55 EUIPO and the intervener dispute the applicant’s arguments.
56 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.
57 According to settled case-law, 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).
58 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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).
59 It is in the light of those considerations that it is necessary to examine whether, as the applicant claims, the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 by finding that, in the present case, there could be no likelihood of confusion.
60 Since the parties do not dispute that the earlier marks relied on in support of the opposition are identical and that the services which they cover are identical or similar, those two marks will, in keeping with the approach adopted in the contested decision, be the subject of a joint examination in the assessment of the likelihood of confusion.
(a) The relevant public and the relevant territory
61 In paragraphs 28 and 29 of the contested decision, the Board of Appeal found that the relevant public consisted of professionals and the general public, that its level of attention was high and that the relevant territory was that of the European Union.
62 Those findings, which, moreover, are not disputed by the applicant, must be upheld.
(b) The comparison of the services at issue
63 The Board of Appeal found, in paragraph 30 of the contested decision, that the services in Class 36 covered by the mark applied for were identical to the services in the same class covered by the earlier marks.
64 Those findings, which, moreover, are not disputed by the applicant, cannot be called into question.
(c) The comparison of the signs at issue
65 According to the case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 17 February 2011, Annco v OHIM – Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited).
66 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
67 Before examining whether the signs at issue are visually, phonetically and conceptually similar, it is therefore necessary to determine their distinctive and dominant elements.
(1) The distinctive and dominant elements
68 As regards the distinctive and dominant elements of the earlier marks, the Board of Appeal found, in paragraphs 53 to 55 of the contested decision, that, since the letters ‘c’ and ‘b’ of which they consist had been ‘radically stylised’, they were no longer easily discernible, with the result that it was the figurative element resulting from the stylisation that had to be regarded as dominant. It found that, due to their stylisation, the relevant public would not immediately recognise the earlier marks as comprising the letters ‘c’ and ‘b’. According to the Board of Appeal, in order to recognise those letters, the relevant public would have to engage in an imaginative cognitive process in order to ‘decipher’ the figurative element, which would mean that it would engage in an analysis which goes far beyond what may reasonably be expected of it in a purchasing situation.
69 As regards the distinctive and dominant elements of the mark applied for, the Board of Appeal found, in paragraph 56 of the contested decision, that it was the word element ‘ccb’ which had to be regarded as distinctive and dominant. It took the view that the figurative element present in that mark, first, dominated it neither by its size nor by its position and, second, would be perceived by the relevant public as decorative on account of the simple geometric shapes of which it consists.
70 The applicant criticises the Board of Appeal for finding that the relevant public would not be able to recognise the letters ‘c’ and ‘b’ in the earlier marks. According to the applicant, while it is true that those letters are stylised, they are identifiable. The contested decision is not substantiated by any evidence to support the conclusion that the relevant public would not be able to identify them. Furthermore, since the filing of the earlier marks, EUIPO has always considered that they correspond to the letters ‘c’ and ‘b’. In addition, at the time of the filing of the earlier EU trade mark, the CB logo had been in use for many years, with the result that the relevant public would perceive that mark as consisting of the letters ‘c’ and ‘b’.
71 The applicant also criticises the Board of Appeal for finding that the relevant public had to engage in an imaginative cognitive process of ‘deciphering’ in order to perceive the letters ‘c’ and ‘b’ in the earlier marks. It submits that the relevant public, which consists of the general public and professionals in the field of banking whose level of attention is high, is familiar with the CB logo as being that of the leading card payment system in France and associates it with the letters ‘c’ and ‘b’. In addition, it maintains that, since the services at issue are financial services, they are not ‘a simple purchase situation’ and the relevant public is ‘quite capable of making the effort to decipher the initials of the payment system of their bank’.
72 EUIPO and the intervener dispute the applicant’s arguments.
73 In that regard, it must be observed that, in its judgment on appeal, the Court of Justice held that it was incorrect in law to assess the similarity of the signs at issue in the light of the reputation or distinctive character of the earlier mark. In particular, it recalled that the examination of the similarity of the signs at issue consisted of a visual, phonetic and conceptual comparison based on the overall impression which those signs made, having regard to their intrinsic qualities, on the memory of the relevant public, whereas the distinctive character of the earlier mark concerned the ability of that mark to identify the goods or services in respect of which it had been registered as coming from a particular undertaking and thus to distinguish those goods or services from those of other undertakings. Thus, the Court of Justice ruled that, by holding that the First Board of Appeal of EUIPO had been entitled to infer from the reputation and highly distinctive character of the earlier EU mark that it would be perceived as being the word element ‘cb’, that that word element was therefore dominant and that it must, in turn, dominate the assessment of the similarity of the signs at issue, the General Court had erred in law (see, to that effect, the judgment on appeal, paragraphs 56 to 64).
74 The Board of Appeal was therefore required to base the examination of the similarity of the signs at issue on the overall impression which those signs made, having regard to their intrinsic qualities, on the memory of the relevant public.
75 As regards the overall impression which the earlier marks make, having regard to their intrinsic qualities, on the memory of the relevant public, it must be stated that, as is apparent from paragraph 68 above, the Board of Appeal found that, since the letters ‘c’ and ‘b’ of which they consist had been ‘radically stylised’, they were no longer easily discernible, with the result that it was the figurative element resulting from the stylisation that had to be regarded as their dominant element.
76 In so far as the stylisation of a mark is a graphic element, which forms part of the figurative elements of a sign, it may be regarded as an intrinsic quality. Furthermore, where the stylisation is sufficiently striking, it can change the perception of the word elements.
77 In the present case, since the earlier marks are figurative marks, the Board of Appeal was entitled to take their stylisation into account in the examination of the similarity of the signs at issue.
78 It should, however, be noted that the applicant’s arguments are based, in essence, on an assessment of the overall impression which the earlier marks make on the memory of the relevant public that is different from that adopted by the Board of Appeal in the contested decision.
79 In that regard, it must be borne in mind that, according to the case-law, not only a sign which is actually impossible to read or decipher is regarded as illegible, but also a sign which is so difficult to decipher, understand or read that a reasonably observant and circumspect consumer could not manage to do so without engaging in an analysis which goes beyond what may reasonably be expected of him or her in a purchasing situation (see judgment of 2 July 2008, Stradivarius España v OHIM – Ricci (Stradivari 1715), T‑340/06, not published, EU:T:2008:241, paragraph 34 and the case-law cited).
80 In the present case, the view must be taken that the stylisation of the earlier marks is sufficiently strong to change the perception of the relevant public and constitutes an important factor in the examination of the similarity of the signs at issue. The graphic representation of the earlier marks is such that the relevant public will not immediately recognise that those marks can also be perceived as consisting of the sequence of the letters ‘c’ and ‘b’. In order to identify and read that sequence of letters in the earlier marks, the average consumer from the relevant public, whether the general public or professionals, would have to engage in an imaginative process in order to ‘decipher’ the figurative element of which they consist and to perceive it as representing the letters ‘c’ and ‘b’. Thus, even if it is not entirely impossible for the average consumer to identify and read the letters ‘c’ and ‘b’ in the earlier marks, this would nevertheless require the average consumer to engage in an analysis which goes beyond what may reasonably be expected of him or her in a purchasing situation (see, to that effect, judgments of 24 March 2021, Kfz-Gewerbe v EUIPO – The Blink Fish (Representation of a fish), T‑354/20, not published, EU:T:2021:156, paragraph 50, and of 1 September 2021, Sony Interactive Entertainment Europe v EUIPO – Wong (GT RACING), T‑463/20, not published, EU:T:2021:530, paragraph 68).
81 Admittedly, it cannot be ruled out that a part of the relevant public might have a different perception of the earlier marks and immediately identify the letters ‘c’ and ‘b’ within them. In that regard, it must be noted that no analysis intended to describe the relevant public’s approach to a sign can claim to be exhaustive, in the sense that all members of that public will adopt an identical approach, without exception (judgment of 19 December 2019, Japan Tobacco v EUIPO – I.J. Tobacco Industry (I.J. TOBACCO INDUSTRY), T‑743/18, not published, EU:T:2019:872, paragraph 34). In order to conclude that there exists a likelihood of confusion as referred to in Article 8(1)(b) of Regulation No 207/2009, it is not necessary to find that that likelihood exists for the whole of the relevant public (see judgment of 5 February 2016, Kicktipp v OHIM – Italiana Calzature (kicktipp), T‑135/14, EU:T:2016:69, paragraph 115 (not published) and the case-law cited).
82 In that context, it is for the applicant to show that the analysis carried out by the Board of Appeal is incorrect in respect of a significant part of the relevant public, in the sense that only a negligible part of that public would perceive the earlier mark as consisting of a figurative element (see, to that effect, judgment of 5 May 2021, Capella v EUIPO – Cobi.bike (GOBI), T‑286/20, not published, EU:T:2021:239, paragraph 38 and the case-law cited). According to the case-law, a finding that there is a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition brought against an application for registration of a mark (see judgment of 20 November 2017, Stada Arzneimittel v EUIPO – Urgo recherche innovation et développement (Immunostad), T‑403/16, not published, EU:T:2017:824, paragraph 50 and the case-law cited).
83 In the present case, it must be stated, as EUIPO submits, that the applicant has not adduced any evidence capable of establishing that only a negligible part of the relevant public of the European Union would be likely to perceive the earlier marks as consisting of a figurative element composed of two rounded shapes. In that regard, it is sufficient to note that, among the evidence relied on by the applicant, none relates to the perception of the relevant public, with the result that that evidence is not capable of demonstrating that a significant part of the relevant public perceives the earlier marks as consisting of the letters ‘c’ and ‘b’. While Annexes A 5 (including, in particular, the applicant’s annual reports from 2010 to 2014, a 2015 copy of the extract from the main registration in the Registre du commerce et des sociétés (Commercial and Companies Register) citing the members of the applicant, a 2011 press release from the Autorité de la concurrence (Competition Authority, France) on bank cards, an extract from the 2016 report ‘Payment Cards Issuing and Acquiring Europe’ of RBR London, press releases by the applicant from 2010 and 2012, or website screenshots from 2011 containing the CB logo) and A 9 (reproducing the same items of evidence) to the application are capable of proving the reputation of those earlier marks, they cannot show that the Board of Appeal’s analysis is incorrect in respect of a significant part of the relevant public. As is apparent, in essence, from paragraph 62 of the judgment on appeal, Regulation No 207/2009 cannot be understood as meaning that the reputation or the high level of distinctive character of a trade mark may lead to a finding that one of its constituent elements dominates over another of its elements for the purposes of assessing the similarity of the signs at issue.
84 It follows that the Board of Appeal did not err in finding that, since the letters ‘c’ and ‘b’ of which the earlier marks consist had been ‘radically stylised’, they were no longer easily discernible, with the result that it was the figurative element resulting from the stylisation that had to be regarded as dominant.
85 The arguments put forward by the applicant cannot call that assessment into question.
86 First, as regards the applicant’s argument that, even though the letters ‘c’ and ‘b’ of which the earlier marks consist are stylised, they remain identifiable, it must be stated that, although it is not impossible to recognise those letters within the earlier marks, that argument does not call into question the conclusion reached in paragraph 80 above that, due to their graphic representation, such recognition would require the average consumer to engage in an analysis which goes beyond what may reasonably be expected of him or her in a purchasing situation. Therefore, that argument, without being substantiated by any evidence on the perception of the earlier marks by a significant part of the relevant public, cannot succeed.
87 Second, the applicant’s argument that, since the filing of the earlier marks, EUIPO has always considered that they corresponded to the letters ‘c’ and ‘b’ cannot succeed either.
88 First, it is irrelevant that, at the time of filing of the earlier marks, EUIPO identified them, in its database, as consisting of the letters ‘c’ and ‘b’. As EUIPO correctly observes, the existence of visual similarity depends on the comparison of the signs as perceived by the relevant public, and not as described at the time of filing of an application for an EU trade mark. In that regard, it follows from the case-law that the descriptions of the marks set out in the EUIPO databases have exclusively administrative purposes (see, to that effect, judgment of 21 May 2015, Evyap v OHIM – Megusta Trading (nuru), T‑56/14, not published, EU:T:2015:304, paragraph 22 and the case-law cited). The same is true of the reference ‘CB (FIG. MARK)/CB Commercial et al.’ which appears in the footer of the decision of the First Board of Appeal in Case R 149/2004‑1.
89 Second, it is necessary to reject the argument put forward by the applicant in the first plea in law, alleging that the Board of Appeal, in adopting the contested decision, ‘[contradicted] itself suddenly’ and breached the principle of legal certainty.
90 First of all, the applicant’s argument that EUIPO had never considered the decision of the First Board of Appeal in Case R 149/2004‑1 to be relevant in the present case is immaterial. In that regard, it must be stated that the Second Board of Appeal was required, in accordance with Article 72(6) of Regulation 2017/1001, to take the necessary measures to comply with the judgment on appeal and that, in its judgment on appeal, the Court of Justice held that the General Court had erred in law in finding that the First Board of Appeal had been entitled to infer from the reputation and highly distinctive character of the earlier mark that it would be perceived by the relevant public as consisting of the word element ‘cb’, that that word element was dominant and that it must dominate the assessment of the similarity of the signs at issue. In that context, the Second Board of Appeal cannot be criticised for adopting the approach taken in the decision in Case R 149/2004‑1, which had not been called into question by the judgment on appeal and in respect of which the General Court had held that ‘it [had] therefore [been] irrelevant, in any event, that, [in that decision], the First Board of Appeal, on the basis of a relevant territory not including France and without taking into consideration the reputation of the earlier mark, which was the subject matter of the trade mark application in the case at issue, [had taken] the view that the relevant public would not perceive that mark as representing the capital letters “C” and “B”’. As is apparent from that assessment, the decision in Case R 149/2004‑1 concerned the earlier EU trade mark and, in that decision, the reputation of that mark had not been taken into account in the assessment of the similarity of the signs at issue, which is consistent with the judgment on appeal.
91 Next, it is necessary to reject the applicant’s argument that the Second Board of Appeal contradicted EUIPO’s position in the latter’s response before the General Court in Case T‑665/17, according to which, in essence, the reputation of the earlier mark had been used solely as an additional argument and, even if the view were to be taken that the Board of Appeal should not have referred to the reputation at the stage of the comparison of the signs, the arguments based on the representation would be sufficient to uphold the finding that the relevant public would perceive the earlier mark as consisting of the letters ‘c’ and ‘b’. In that regard, it must be stated, as EUIPO and the intervener submit, that, as is apparent from paragraph 41 of the judgment on appeal, the Court of Justice took into account that interpretation by EUIPO but set aside the judgment of the General Court and annulled the decision of the First Board of Appeal. Thus, following the judgment on appeal, the Second Board of Appeal cannot be criticised for not adopting the same approach as EUIPO in the latter’s response before the General Court in Case T‑665/17.
92 Lastly, in so far as the applicant submits that, in several previous decisions, EUIPO had considered that the earlier marks corresponded to the letters ‘c’ and ‘b’, it must be borne in mind that the legality of the decisions of the Boards of Appeal of EUIPO must be assessed solely on the basis of the applicable regulation, namely, in the present case, at least as regards the substantive rules, Regulation No 207/2009, as amended and interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of EUIPO’s adjudicating bodies, which cannot, in any event, bind the Courts of the European Union (see order of 5 December 2019, Agencja Wydawnicza Technopol v EUIPO, C‑664/19 P, not published, EU:C:2019:1048, paragraph 17 and the case-law cited, and judgment of 12 December 2019, Baustoffwerke Gebhart & Söhne v EUIPO (BIOTON), T‑255/19, not published, EU:T:2019:853, paragraph 27 and the case-law cited).
93 Third, the applicant also cannot maintain that, at the time of filing of the earlier EU trade mark, the CB logo had been used for many years to designate payment services, with the result that the relevant public would associate the earlier marks with the letters ‘c’ and ‘b’.
94 In that regard, it must be borne in mind that the examination of the similarity of the signs at issue must be based solely on the overall impression which those signs make, having regard to their intrinsic qualities, on the memory of the relevant public and that their use is not relevant in that context. Use is one of the relevant factors to be taken into consideration in the assessment of the reputation of an earlier mark (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 55 and 56 and the case-law cited) and the reputation must be taken into consideration for the purposes of assessing the likelihood of confusion, and not for the purposes of assessing the similarity of the marks at issue, which is an assessment made prior to that of the likelihood of confusion (see, to that effect, judgment of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 54 and the case-law cited).
95 In addition, it must be noted that the Court of Justice has also held that, although the marketing circumstances are a relevant factor in the application of Article 8(1)(b) of Regulation No 207/2009, they are to be taken into account at the stage of the global assessment of the likelihood of confusion and not at that of the assessment of the similarity of the signs at issue (judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 70).
96 Therefore, contrary to what the applicant claims, the Board of Appeal’s analysis is not vitiated by an error of law on account of a failure on its part to take into account, in the examination of the similarity of the signs at issue, the applicant’s use of its marks (see, to that effect, judgment of 1 September 2021, GT RACING, T‑463/20, not published, EU:T:2021:530, paragraph 60).
97 Fourth, in so far as the applicant claims that the relevant public, which consists of the general public and professionals in the field of banking, whose level of attention is high, is familiar with the CB logo as being that of the leading card payment system in France and associates it with the letters ‘c’ and ‘b’, with the result that the Board of Appeal erred in finding that that public would have to engage in a ‘deciphering’ process in order to identify those letters, it must be stated, as the intervener submitted, that the Board of Appeal took into account, in paragraph 54 of the contested decision, the fact that the relevant public consisted of the general public and professionals with a high level of attention, but found that the manner in which the earlier marks were represented did not allow that public immediately to recognise the letters of which the earlier marks consist.
98 Beyond that, the applicant’s claim that the relevant public is familiar with the CB logo as being that of the leading card payment system in France and associates it with the letters ‘c’ and ‘b’ cannot be regarded as an intrinsic quality that may be taken into account at the stage of the comparison of the signs at issue. In that regard, it is sufficient to state that the Court of Justice held, in essence, in paragraph 64 of the judgment on appeal, that the General Court had erred in law, in paragraph 54 of its judgment, by holding that the Board of Appeal had been entitled to rely on the significance of the awareness of the link which that mark established with the bank cards defined by the applicant’s acronym CB, in order to infer from this that the relevant public would perceive the earlier mark as being the word element consisting of the acronym CB.
99 Similarly, it is necessary to reject the applicant’s claim that, since the services at issue are financial services, there is not ‘a simple purchase situation’ and the relevant public is ‘quite capable of making the effort to decipher the initials of the payment system of their bank’. In that regard, first, it should be borne in mind that, according to the case-law, the average consumer evaluates the sign in a purchasing situation, during which the consumer does not habitually engage in a detailed analysis (judgment of 24 March 2021, Representation of a fish, T‑354/20, not published, EU:T:2021:156, paragraph 49). It must be stated that the applicant does not explain how the consumption of financial services is not equivalent to ‘a simple purchase situation’. Second, as the applicant itself admits, the relevant public will have to make ‘the effort to decipher the initials of the payment system of their bank’. Nevertheless, such an effort implies, in accordance with the case-law cited in paragraph 79 above, that the average consumer will engage in an analysis which goes beyond what may reasonably be expected of him or her in a purchasing situation.
100 In the light of those factors, it must be observed that the Board of Appeal was correct to find, in paragraph 53 of the contested decision, that the figurative element resulting from the stylisation had to be regarded as dominant within the earlier marks.
101 As regards the overall impression made by the mark applied for, having regard to its intrinsic qualities, on the memory of the relevant public, it must be pointed out that the Board of Appeal also did not err in finding that the word element ‘ccb’ had to be regarded as its distinctive and dominant element. In view of the relevant public in the present case, the figurative element of the mark applied for will be perceived, in the light of the simple geometric shapes of which it consists, as decorating the word element ‘ccb’, in respect of which it may be observed that it is formed of the initials of the intervener’s name and that it thus establishes the origin of the services indicated for the undertaking in question, which is a characteristic of the concept of distinctive character. Furthermore, the figurative element of the mark applied for dominates it neither by its size, which is equivalent to that of the word element, nor by its position within the mark. On the contrary, as a result of its position above the second capital letter ‘C’ of the word element, it emphasises that letter.
102 It is in the light of the foregoing considerations that it is necessary to examine whether the visual, phonetic and conceptual comparison of the signs at issue carried out by the Board of Appeal is vitiated by any errors of assessment.
(2) The visual, phonetic and conceptual comparison
103 In paragraphs 57 to 60 of the contested decision, the Board of Appeal found that, as regards the visual comparison, the distinctive and dominant word element ‘ccb’ of which the mark applied for consists was rather different from the figurative element of the earlier marks and that that difference was not attenuated by the figurative element within the mark applied for, with the result that the signs at issue were visually dissimilar. It added that, as regards the phonetic comparison, since the relevant public would not discern any word element that could be pronounced within the earlier marks, that comparison was not possible. As regards the conceptual comparison, the Board of Appeal stated that it was not disputed that this could not be made. It thus concluded that the mark applied for was dissimilar to the earlier marks.
104 The applicant submits that the signs at issue have the letters ‘c’ and ‘b’ in common, with the result that, first, the presence of the second letter ‘c’ and of the figurative element in the mark applied for is not such as to rule out any visual similarity and, second, there is a phonetic similarity between the mark applied for and the earlier marks.
105 EUIPO and the intervener dispute the applicant’s arguments.
106 As regards the visual comparison, it must be stated that, in so far as, having regard to their intrinsic qualities, the earlier marks consist of a figurative element composed of two rounded shapes, whereas the mark applied for consists of a word element, ‘ccb’, and a figurative element decorating the latter, the Board of Appeal was entitled to conclude that there was no visual similarity between the mark applied for and the earlier marks (see, by analogy, judgment of 1 September 2021, GT RACING, T‑463/20, not published, EU:T:2021:530, paragraphs 69 and 71).
107 As regards the phonetic comparison, it must be observed that, in so far as, in the present case, it has not been shown that a significant part of the relevant public would identify the letters ‘c’ and ‘b’ within the earlier marks, no constituent element of those marks is capable of being pronounced. Owing to the impossibility of pronouncing the earlier marks, the Board of Appeal was also entitled to find that the signs at issue could not be compared phonetically (see, by analogy, judgment of 24 March 2021, Representation of a fish, T‑354/20, not published, EU:T:2021:156, paragraph 68).
108 As regards the conceptual comparison, it is necessary to uphold the assessment set out in paragraph 59 of the contested decision, which is not disputed by the applicant, that such a comparison was not possible.
109 In the light of all of the foregoing, given that the Board of Appeal was entitled to find that the signs at issue were visually dissimilar and that it was not possible to carry out a phonetic and conceptual comparison, as is apparent from paragraphs 106, 107 and 108 above, the Board of Appeal also acted correctly in finding, in paragraph 60 of the contested decision, that the signs at issue were dissimilar.
(d) The likelihood of confusion
110 In paragraph 61 of the contested decision, the Board of Appeal stated that, since the signs at issue were dissimilar, one of the conditions laid down in Article 8(1)(b) of Regulation No 207/2009 was not met, with the result that there could be no likelihood of confusion on the part of the relevant public between the earlier marks and the mark applied for, irrespective of the identity of the services at issue or the enhanced distinctiveness of the earlier marks.
111 The applicant submits, in essence, that the services at issue are identical, that the signs at issue are similar and that the earlier marks have a highly distinctive character in France, with the result that a likelihood of confusion on the part of the relevant public cannot be excluded for the purposes of Article 8(1)(b) of Regulation No 207/2009.
112 EUIPO and the intervener dispute the applicant’s arguments.
113 In the present case, since, as is apparent from paragraph 58 above, the similarity of the marks is one of the cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009, and since it has been held, in paragraph 109 above, that no similarity between the marks at issue could be established, the Board of Appeal was correct to find that there was no likelihood of confusion within the meaning of that article, irrespective of the identity of the services at issue and even assuming that the earlier marks were highly distinctive (see, by analogy, judgment of 24 March 2021, Representation of a fish, T‑354/20, not published, EU:T:2021:156, paragraph 70).
114 In the light of the foregoing, the applicant’s second plea in law must be rejected.
3. The third plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009
115 In paragraph 63 of the contested decision, the Board of Appeal found that, given that the mark applied for had been found to be dissimilar to the earlier marks, one of the cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 was not met, and rejected the opposition based on that provision.
116 The applicant, taking the view that the signs at issue are similar, submits that it is necessary to examine the other conditions of Article 8(5) of Regulation No 207/2009, to the effect that the mark applied for would take unfair advantage of the distinctive character and repute of the earlier marks.
117 EUIPO and the intervener dispute the applicant’s arguments.
118 Article 8(5) of Regulation No 207/2009 provides that the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
119 In order for an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, the following three conditions must, therefore, be satisfied: (i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those three conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 9 March 2012, Ella Valley Vineyards v OHIM – HFP (ELLA VALLEY VINEYARDS), T‑32/10, EU:T:2012:118, paragraph 18 and the case-law cited).
120 The identity or similarity of the marks at issue is therefore a necessary condition for the application of that provision.
121 In addition, it is not apparent either from the wording of Article 8(1)(b) of Regulation No 207/2009 or of Article 8(5) of that regulation or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under Article 8(1)(b) or under Article 8(5) (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 54).
122 In the present case, it is sufficient to recall that it is apparent from the examination of the second plea in law that the marks at issue are dissimilar.
123 Therefore, since the first of the cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 is not met, the Board of Appeal was correct to reject the opposition brought by the applicant on the basis of that provision.
124 In the light of all of the foregoing, the third plea in law must be rejected and the action must be dismissed in its entirety.
Costs
125 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener, without it being necessary to rule on the admissibility of its second head of claim, inasmuch as it refers to costs incurred for ‘all previous proceedings’.
126 In that regard and in so far as the intervener claims, inter alia, that the applicant should be ordered to pay the costs of the proceedings before the Second Board of Appeal of EUIPO, it suffices to note that, since the present judgment dismisses the action brought against the contested decision, paragraph 3 of the operative part of that decision continues to govern the costs incurred in the course of the opposition procedure and in the appeal proceedings before EUIPO (see, to that effect, judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 131).
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Groupement des cartes bancaires (CB) to pay the costs.
Costeira | Kancheva | Zilgalvis |
Delivered in open court in Luxembourg on 9 November 2022.
E. Coulon | | M. van der Woude |