EFFAS v EUIPO - CFA Institute (CEFA Certified European Financial Analyst) (EU trade mark - Judgment) [2021] EUECJ T-369/20 (21 December 2021)

Judgment Background to the dispute On 14 December 2015, the applicant, European Federation of Financial Analysts’ Societies (EFFAS), filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (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)). Registration as a mark was sought for the word sign CEFA Certified European Financial Analyst. The goods and services in respect of which registration of the mark was sought are 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, and correspond, 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’. After refusing registration of the mark applied for pursuant to Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001), EUIPO agreed to register it on 22 May 2017 on the basis of distinctiveness 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 2017/105 of 6 June 2017. On 6 September 2017, the intervener, CFA Institute, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above. The opposition was based on, inter alia, the following four earlier rights: – the EU word mark CFA, which was filed on 4 January 2000 and registered on 2 March 2001 under the number 1448596 and covers the following goods and services: – 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’; – the EU figurative mark reproduced below, which was filed on 13 January 2000 and registered on 8 October 2002 under the number 1460534 and covers services in Class 42 corresponding to the following description: ‘Association services, namely the promotion of education, professional responsibility, ethics and integrity of financial analysts’; – the international registration designating, inter alia, the European Union of the figurative mark reproduced below, which was filed and registered on 22 November 2011 under the number 1102821 and covers goods and services corresponding to the following description: – Class 16: ‘Printed publications, namely, newsletters, brochures, books, digest books, and monographs in the fields of investment management and financial analysis and in support of the interests of investment professionals and financial analysts’; – Class 35: ‘Association services, namely, the promotion of professional standards and practices and providing career information in the fields of investment management and financial analysis; promoting the interests of investment professionals and financial analysts’; – Class 41: ‘Educational services, namely, arranging, conducting, and providing courses of instruction, examinations, workshops, seminars and conferences in the fields of investment management and financial analysis and distributing course materials in connection therewith’; – the international registration of the word mark CFA INSTITUTE, which was registered on 19 June 2012 under the number 1130423 and covers goods in Class 9 corresponding to the following description: ‘Downloadable publications, in the nature of newsletters, magazines, books, digest books, and monographs and downloadable video and audio content, all in the fields of investment management and financial analysis’. 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). By decision of 21 March 2019, the Opposition Division upheld the opposition in its entirety, finding in essence that, taking into account the EU word mark CFA, number 1448596, and the goods and services covered by that mark, a likelihood of confusion had to be found to exist with regard to all the goods and services covered by the mark applied for. On 16 May 2019, the applicant filed a notice of appeal against the Opposition Division’s decision, requesting that that decision be annulled in its entirety, and alleged misapplication of Article 8(1)(b) of Regulation 2017/1001. By decision of 31 March 2020 (‘the contested decision’), the Fifth Board of Appeal confirmed the Opposition Division’s decision, thus dismissing the appeal brought by the applicant. Focussing its examination solely on the earlier mark CFA, the Board of Appeal found, in essence, inter alia, that the goods and services covered by the mark applied for were identical or similar to those covered by that earlier mark. It found that the relevant public with regard to the goods and services at issue consisted both of the general public, the level of attention of which was average, and of professionals, whose level of attention was high. It stated that the public with the lowest level of attention had to be taken into account in the context of the examination. From a visual standpoint, it found that the two signs were similar to an average degree. From a phonetic standpoint, it took the view that the marks at issue were similar to a very high degree or to a low degree depending on the way in which the initial element in the mark applied for, namely the element ‘cefa’, was pronounced. From a conceptual standpoint, it found that the signs were not similar. In its view, the earlier mark had an average degree of distinctiveness. Lastly, the Board of Appeal found that, bearing in mind the notion of imperfect recollection and the ‘principle of interdependence’ and having regard to the similarities between the signs at issue and the identity and similarity of the goods and services at issue, there was a likelihood of confusion on the part of the English-speaking part of the relevant public. In paragraph 55 of the contested decision, the Board of Appeal added that, if the mark applied was considered as a whole, the relevant public would understand that the letter ‘e’ of its acronym meant ‘European’. It took the view that, therefore, consumers, ‘including the professional public’, could be led to believe that the proprietor of the earlier mark CFA had launched a new line of goods and services designated by the mark applied for. It found that there was therefore a risk that the ‘relevant public’ would associate the marks, believing that the mark applied for was the European arm of a global or national entity CFA. Procedure and forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. Law 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). Since the relevant substantive provisions which are applicable in the present case are identical in the versions resulting from Regulation No 207/2009 and Regulation 2017/1001 respectively, the fact that the parties referred to the provisions of the latter regulation has no bearing for the purposes of the present proceedings and their arguments must be interpreted as being based on the relevant provisions of Regulation No 207/2009 (judgment of 5 October 2020, nanoPET Pharma v EUIPO – Miltenyi Biotec (viscover) , T‑264/19, not published, EU:T:2020:470 , paragraph 23). The likelihood of confusion, which is referred to in the first part of Article 8 (1)(b) of Regulation No 2 07/2009 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 the context of that plea, it claims that the Board of Appeal erred when carrying out the comparison of the signs at issue in order to establish whether those signs were similar or not. It submits that the Board of Appeal therefore erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. EUIPO and the intervener dispute the applicant’s arguments. 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. 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. According to the same case-law, 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). Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited). Lastly, 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). It is in the light of those principles that the applicant’s various claims must be examined. In the contested decision, the Board of Appeal found that the relevant public for the purposes of assessing whether there was a likelihood of confusion in the present case consisted of the consumers in the European Union (paragraph 31 of the contested decision). Since the mark applied for featured English words, it was necessary, according to the Board of Appeal, to focus, in the present case, on the English-speaking public (paragraph 33 of the contested decision). It found that the relevant public with regard to the goods and services covered by the mark applied for and by the earlier mark CFA consisted both of the general public interested in education and training and of a specialist public of business professionals and professionals in the field of finance, with specific knowledge or expertise (paragraph 30 of the contested decision). The relevant public’s level of attention would therefore, according to the Board of Appeal, vary from average to high. It found that, in the present case, because the goods and services at issue were intended both for professionals and for the general public, the public with the lowest level of attention had to be taken into account (paragraphs 30 and 50 of the contested decision). Since the mark applied for contains English words, the Board of Appeal was entitled to focus on the English-speaking public in the present case, with the result that that finding, which is not, moreover, disputed by the applicant, must be upheld. It is also true that, for the reasons set out by the Board of Appeal, the relevant public consists both the general public and of professionals. Lastly, the finding that the professional public has a high level of attention is also correct. However, as regards the issue of the relevant general public’s level of attention with regard to the goods and services at issue, it is necessary to depart from the assessments in paragraph 30 of the contested decision, in spite of the fact that the applicant has not disputed those assessments in its application. In that respect, it must be borne in mind that, even if the applicant has not disputed an incorrect assessment of the facts which a Board of Appeal of EUIPO has made in its decision, where it is called upon to assess the legality of such a decision, the General Court cannot be bound by an incorrect assessment in it, since that assessment is part of the findings the legality of which is being disputed before the General Court (judgment of 18 October 2012, Neuman and Galdeano del Sel v Baena Grupo , C‑101/11 P and C‑102/11 P, EU:C:2012:641, paragraph 40). In the present case, the Board of Appeal’s assessments regarding the general public’s level of attention are part of the findings the legality of which is being disputed before the Court. In the first place, as to, more specifically, the general public’s level of attention with regard to the education and training services at issue in Class 41 (see paragraphs 3 and 7 above), it is necessary to make the following points. On the one hand, it has been held that, although the education and training services in Class 41 in general are sometimes expensive, they may also be offered at lower prices. Furthermore, those services do not necessarily entail long-term commitments. Likewise, even though the services at issue are not everyday consumer services, the acquisition of those services is not as a matter of course preceded by a long process of reflection. For those reasons, as regards such services, the Court has held that a ‘heightened’ level of attention on the part of the general public cannot be presumed (judgment of 24 September 2019, IAK – Forum International v EUIPO – Schwalb (IAK) , T‑497/18, not published, EU:T:2019:689 , paragraphs 32 and 33). On the other hand, it has been held that training services in Class 41 in general are aimed at expanding knowledge and developing skills, usually through a commitment in terms of time and resources on the part of the relevant public. According to that part of the case-law, those services do not satisfy a current or recurring need, but a personal or leisure interest. In principle, the general public will use them to acquire knowledge and skills for the purpose of professional and functional retraining or to develop specific technical expertise. For those reasons, the Court has held that, as regards such services, the level of attention of the average consumer in the relevant public is ‘high’ (judgment of 9 December 2020, Man and Machine v EUIPO – Bim Freelance (bim ready) , T‑819/19, not published, EU:T:2020:596 , paragraph 35). For the purposes of the present case, it is not necessary to decide which of the two approaches set out in paragraphs 28 and 29 above should be followed. By contrast with the category of services to which the judgments of 24 September 2019, IAK (T‑497/18, not published, EU:T:2019:689 ), and of 9 December 2020, bim ready (T‑819/19, not published, EU:T:2020:596 ), relate, namely training services in general, the education and training services at issue are services which are specific in nature since they concern the field of financial analysis. According to recent case-law, so far as concerns training services relating to financial analysis, in Class 41, consumers interested in those services, even if they are part of the general public, will pay particular attention to them when choosing which programmes they prefer, usually after examining and comparing the educational offers available (judgment of 9 June 2021, Global Chartered Controller Institute v EUIPO – CFA Institute (CCA CHARTERED CONTROLLER ANALYST CERTIFICATE) , T‑266/20, not published, EU:T:2021:342 , paragraph 47). Since consumers do not make use of financial training services on a daily basis, their level of attention cannot be equivalent to that which they display with regard to everyday consumer services, but must, on the contrary, necessarily be considered to be higher (judgment of 9 June 2021, CCA CHARTERED CONTROLLER ANALYST CERTIFICATE , T‑266/20, not published, EU:T:2021:342 , paragraph 48). For the reasons set out in paragraphs 47 and 48 of the judgment of 9 June 2021, CCA CHARTERED CONTROLLER ANALYST CERTIFICATE (T‑266/20, not published, EU:T:2021:342 ), the analysis and the findings in those paragraphs of that judgment must be endorsed. With regard to the education and training services in Class 41 at issue, contrary to what is set out in paragraph 30 of the contested decision, it must therefore be held that the general public’s level of attention is high. Moreover, it is important to add that, at the hearing, in response to a question put to them by the Court, the parties to the proceedings were able to submit their observations regarding the issue of the level of attention which the general public might display as regards the education and training services at issue in Class 41, including the interpretation which should, in the light of the three judgments referred to in paragraphs 28, 29 and 31 above, be adopted in the present case. In the second place, as regards the goods and services other than the education and training services in Class 41, that is to say, the goods in Classes 9 and 16 and the services in Class 42, it must be stated that those goods and services are also connected with the field of financial analysis. In relation to those goods and services, the general public’s level of attention must also be held to be high, in line with what has been pointed out in paragraph 32 above. For the reasons set out previously, it must be held that the Board of Appeal’s finding that the general public’s level of attention is average as regards the education and training services in Class 41 at issue constitutes an error of law. That error vitiated all of the Board of Appeal’s reasoning in paragraphs 50 to 54 of the contested decision, which relate to the global assessment of any likelihood of confusion with regard to the mark applied for and the earlier mark CFA. In the context of the present proceedings, it is true that EUIPO and the intervener have stated that when the Board of Appeal set out its findings as regards the existence of a ‘likelihood of association’, in paragraph 55 of the contested decision, it did not confine itself to making its findings solely on the basis of the existence of an average level of attention, but took into account the high level of attention which is specific to professionals. According to EUIPO and the intervener, it should be held in the present case that the Board of Appeal also examined the relevant services from the point of view of a high level of attention. That argument is not, however, convincing. The argument referred to in paragraph 37 above is tantamount to transposing the reference in paragraph 55 of the contested decision, regarding the existence of a high level of attention on the part of professionals, to the reasoning in paragraphs 50 to 54 of that decision. Such reasoning would contradict the premisses on which those latter paragraphs of the contested decision are based and cannot therefore be accepted. Indeed, in paragraph 50 of the contested decision, after stating that, in its view, the goods and services at issue ‘[wer]e addressed to the public at large having an average degree of attention and to a professional public having a higher than normal degree of attention’, the Board of Appeal continued its reasoning by stating: ‘As it is settled case-law that the general public is more prone to confusion, the examination proceeded on this basis.’ The Board of Appeal did not therefore intend to analyse and did not analyse whether there was a likelihood of confusion by taking into account, as a criterion for assessment, a high level of attention on the part of the general public with regard to the goods and services at issue, but solely an average level of attention on the part of that public. By arguing as it did in paragraph 50 of the contested decision, the Board of Appeal ruled out the possibility that it intended to analyse the likelihood of confusion by taking into account a high level of attention on the part of the general public. That error had an impact on the Board of Appeal’s global assessment of the likelihood of confusion. Following the annulment of the contested decision, it will be for the Board of Appeal to resume that analysis by taking into account the level of attention which the general public has been held to have in the present judgment. The other reason why the Board of Appeal’s findings and premisses regarding the likelihood of association, which is referred to in paragraph 55 of the contested decision, cannot be transposed to the global assessment of the likelihood of confusion in paragraphs 50 to 54 of that decision is the fact that, according to the inherent logic of the contested decision, and in spite of the expression ‘in particular’ with which paragraph 55 of that decision begins, the Board of Appeal’s assessments in that paragraph sought to substantiate the finding relating to the presence of a likelihood of confusion only as a secondary point, given that that finding already appears in paragraph 54 of that decision. Without any additional explanation, which neither EUIPO nor the intervener has provided in the present case, what the Board of Appeal pointed out in the context of alternative reasoning cannot be transposed to its findings in the context of the principal examination. The likelihood of association, which is referred to in the last part of Article 8 (1)(b) of Regulation No 2 07/2009 As has already been pointed out, the Board of Appeal, in paragraph 55 of the contested decision, found, in the alternative, that there was a likelihood of association as regards the mark applied for and the earlier mark CFA. By an argument put forward in paragraph 72 of the application, the applicant has called into question the merits of the Board of Appeal’s statement in paragraph 55 of the contested decision, by declaring that it is a statement based on erroneous assumptions which are unrelated to the reality of the market. According to the applicant, companies never modify their marks by adding another letter to their usual marks or acronyms. The argument put forward in paragraph 72 of the application is tantamount to stating that the mark applied for does not have any characteristics which are capable of creating an association between the sign applied for and any series of earlier marks, because that is not how companies proceed. In those circumstances, it must be held that that argument on the part of the applicant also seeks to dispute, by virtue of its substance, the Board of Appeal’s assessments regarding the existence of a likelihood of confusion. EUIPO and the intervener dispute that claim made by the applicant. In that regard, it must be pointed out that a likelihood of association may be invoked only if two conditions are cumulatively satisfied. In the first place, it is necessary to establish that there is a series of earlier registrations or, at the very least, that there are a number of marks capable of constituting a series. In the second place, the mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series (see, to that effect, judgments of 23 February 2006, Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE) , T‑194/03, EU:T:2006:65 , paragraphs 125 to 127, and of 25 November 2014, UniCredit v OHIM , T‑303/06 RENV and T‑337/06 RENV, EU:T:2014:988 , paragraph 58). In the present case, by comparing the mark applied for solely with the earlier mark CFA, the Board of Appeal did not ascertain whether there was a series of earlier marks with which the general public might associate the mark applied for. In particular, the Board of Appeal did not examine whether the marks on which the intervener had relied in the context of its opposition, as referred to in paragraph 7 above, actually constituted a series of marks. Consequently, the Board of Appeal did not establish whether one of the substantive conditions inherent in the concept of a likelihood of association, namely that there must be a series of marks, had been satisfied. The examination in paragraph 55 of the contested decision is therefore vitiated by an error of law, with the result that the assessments in that paragraph which relate to the high level of attention of professionals cannot, on their own, justify the operative part of the contested decision. The errors identified in paragraphs 35 and 47 above mean that the contested decision must be annulled, without it being necessary to examine the other claims on which the applicant relied in the context of its plea. Costs 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. In the present case, EUIPO and the intervener have been unsuccessful. Since the applicant has claimed that only EUIPO should be ordered to pay the costs before the Court, EUIPO must be ordered to bear its own costs and to pay those which the applicant has incurred in the present proceedings. In accordance with 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 Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 March 2020 (R 1082/2019 ‑ 5); 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. Tomljenović Schalin Škvařilová-Pelzl Delivered in open court in Luxembourg on 21 December 2021. E. Coulon M. van der Woude Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. 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