JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
6 November 2024 (*)
( EU trade mark – Opposition proceedings – Application for the EU figurative mark CCA CHARTERED CONTROLLER ANALYST CERTIFICATE – Earlier EU word mark CFA and earlier EU figurative mark CFA CHARTERED FINANCIAL ANALYST – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – New decision taken following annulment in part of an earlier decision by the Court – Scope of the proceedings before the Board of Appeal – Res judicata )
In Case T‑561/22,
CFA Institute, established in Charlottesville, Virginia (United States), represented by W. May and G. Engels, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Global Chartered Controller Institute SL, established in Alicante
(Spain), represented by M. Pomares Caballero and
T. Barber Giner, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and E. Tichy-Fisslberger, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure, in particular:
–        the cross-claim of the intervener lodged at the Court Registry on 12 December 2022,
–        the plea of inadmissibility raised by EUIPO by separate document lodged at the Court Registry on 1 March 2023, which was joined to the substantive action on 11 August 2023.
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, CFA Institute, seeks the annulment and alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 9 June 2022
(Case R 1660/2021-2) (‘the contested decision’).
I.      Background to the dispute
2        On 6 June
2016, the intervener, Global Chartered Controller Institute SL, 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)).
3        Registration as a mark was sought for the following figurative sign:
4        The services in respect of which registration was sought are in Classes
35 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 35: ‘advertising; business management; business administration; office functions’;
–        Class 41:
‘education; providing of training; entertainment; sporting and cultural activities’.
5        On 29 August
2016, the applicant filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 4 above.
6        The opposition was based on, inter alia, the following earlier marks:
–        EU word mark CFA, registered on 2 March
2001 under number 1448596 covering, inter alia, the services in Classes 16, 41 and 42 corresponding to the following description:
–        Class 16: ‘Printed publications in the field of financial analysis and in support of the interests of financial analysts’;
–        Class: 41:
‘Educational services, namely arranging, conducting and providing courses of instruction, workshops, seminars and conferences in the field of financial analysis and distributing course materials in connection therewith’;
–        Class 42: ‘Association services, namely promoting the interests of financial analysts’;
–        the EU figurative mark reproduced below, registered on 8 October 2002 under number
1460534, designating services in Class 42 and corresponding to
‘association services, namely the promotion of education, professional responsibility, ethics and integrity of financial analysts’:
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5)
of Regulation No 207/2009 (now Article 8(1)(b) and (5)
of Regulation 2017/1001).
8        On 30 November 2018, the Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion between the marks at issue.
9        On 30 January 2019, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10      By decision of 25 February 2020 (Case R 235/2019-5) (‘the earlier decision’), the Fifth Board of Appeal of EUIPO upheld the appeal in part on the basis of Article 8(1)(b) of Regulation No 207/2009. It considered inter alia that, due to the enhanced distinctiveness of the earlier marks
acquired through use, there was a likelihood of confusion between the marks at issue in respect of the ‘advertising; business management; business administration’ services in Class 35 and the ‘education; providing of training’ services in Class 41, considered to be identical or similar to varying degrees (‘the identical and similar services’). By contrast, the Board of Appeal found that the ‘office functions’ services in Class 35 and those of ‘entertainment; sporting and cultural activities’ in Class 41 (‘the different services’) were different from the services covered by the earlier marks and that, consequently,
the mark applied for could be registered in that regard. Furthermore, the Board of Appeal excluded the application of the relative ground set out in Article 8(5) of Regulation No 207/2009 only in respect of the different services, since the likelihood of confusion had already been found with regard to the identical and similar services.
11      By application lodged at the Court Registry on 8 May 2020, the intervener brought an action which was registered under Case number T‑266/20, seeking annulment in part of the earlier decision as to the identical and similar services, in which a likelihood of confusion had been found.
12      By 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) (‘the annulment judgment’), the Court annulled the earlier decision, on the basis of the plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. The Court held, in essence, that the Board of Appeal had made an error of assessment in concluding that the relevant public’s level of attention was average, whereas the services in question found to be similar to varying degrees, namely those of ‘advertising; business management; business administration’ in Class 35,
were considered to be intended exclusively for highly attentive professionals. Similarly, the Court ruled that the Board of Appeal had erred in finding that the general public had an average level of attention with regard to
the services in question
found to be identical, namely those of ‘education; providing of training’ in Class 41, and while
the latter services had been defined in relation to very specific economic and financial training content, namely financial analysis, those services were not used on a daily basis and the personal and financial investment necessary to access that training was considerable.
13      On 24 September 2021, the case was remitted by the Presidium of the Boards of Appeal to the Second Board of Appeal.
14      By the contested decision, the Board of Appeal took the view, first of all, that, following the Court’s annulment of the earlier decision, it was dealing with the
appeal
that
was brought on
30 January 2019 against the decision of the Opposition Division.
15      Next, bearing in mind the relevant public’s high level of attention and in line with the criteria for application of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal examined the marks at issue referred to in paragraphs 3 and 6 above
with regard to all the services referred to in paragraph 4 above and concluded that there was no likelihood of confusion. Accordingly, it held that, despite an identical relevant public and a common intended purpose in respect of the ‘advertising; business management; business administration’ services in Class 35 and designated by the mark applied for, the latter had a low degree of similarity to the services covered by the earlier marks, whereas the ‘office functions’
services were different from the latter. Similarly, the ‘education; providing of training’ services in Class 41 and designated by the mark applied for were considered to be identical and similar to the services covered by the earlier marks. By contrast, the
‘entertainment; sporting and cultural activities’ services
were regarded as being different from the latter. As for the marks at issue, the Board of Appeal found, on the one hand, that the earlier word mark had a low degree of visual and phonetic similarity to the mark applied for and that they were conceptually different.
On the other hand, as regards the earlier figurative mark, the Board of Appeal concluded that it had a low to medium degree of visual and phonetic similarity with the mark applied for and that there was only a low degree of conceptual similarity between those marks.
16      Lastly, notwithstanding the enhanced distinctiveness of
the earlier word mark and the fact that some of the services in question had been regarded as identical or partly similar, the Board of Appeal held that the similarity between the marks at issue was so low that the relevant public could not confuse them, since, in the context of dominant elements consisting of only three letters, any difference in one letter would be noticed by the very attentive consumer.
17      Moreover, the Board of Appeal held, first, that the two other earlier marks, regarded as being less similar to the mark applied for, covered services other than those relating to the mark applied for. Second, in line with the criteria for application of Article 8(5) of Regulation No 207/2009, it examined only the services designated by the mark applied for and considered to be different. In that regard, it held simply that the degree of knowledge demonstrated by the relevant public in respect of the earlier marks was low, which was sufficient to render that provision inapplicable. Accordingly, it rejected the opposition in its entirety for all the services designated by the mark applied for and, therefore, dismissed the action brought before it.
II.    Forms of order sought
A. The forms of order submitted in support of the main action
18      The applicant claims, in essence, that the Court should:
–        annul the contested decision and uphold the action before the Board of Appeal in its entirety by refusing to register the mark applied for;
–        order the
intervener to pay the costs.
19      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
20      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred before the Court and before the Board of Appeal.
B. The forms of order submitted in support of the cross-claim
21      The intervener claims, in essence, that the Court should:
–        alter the contested decision by declaring, first, that the rejection of the opposition based on the different services, that is to say the
‘office functions’
services in Class 35 and those of ‘entertainment; [and] sporting and cultural activities’
in Class 41, and
the assessments based on Article 8(5) of Regulation No 207/2009, did not form part of the subject matter of either the action before the Board of Appeal or the action pending before the Court in the case T‑561/22 and, second, that those findings had become final, and by dismissing the applicant’s main action;
–        in the alternative, first, annul the paragraphs of the contested decision which relate to the scope of the action (paragraphs 14 and 15 of the contested decision), the different services (paragraphs 25 and 28 of the contested decision) and the analysis of Article 8(5) of Regulation No 207/2009 (paragraphs 72 to 77 of the contested decision) and, second, confirm the contested decision as to the remainder, by dismissing the applicant’s main action;
–        order EUIPO to pay its own costs and those incurred by the applicant in connection with the cross-claim, including the costs
incurred before the Board of Appeal.
22      The applicant contends that the Court should:
–        dismiss the cross-claim, to the extent that it relates to the rejection of the opposition in so far as it was based on Article 8(5) of Regulation No 207/2009;
–        order the intervener to pay the costs incurred in respect of the cross-claim.
23      EUIPO contends that the Court should dismiss the cross-claim.
C. The form of order sought in support of the plea of inadmissibility raised in respect of the cross-claim
24      EUIPO claims that the Court should:
–        dismiss the cross-claim as inadmissible;
–        order the intervener to pay the costs incurred in respect of the cross-claim.
25      In its observations on the plea of inadmissibility, the intervener contends that the Court should declare that the cross-claim is admissible.
III. Law
26      As a preliminary point, given the date on which the application for registration at issue was filed, namely 6 June 2016, 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).
27      Accordingly, in the present case, as regards the substantive rules, references made by the Board of Appeal in the contested decision and by the applicant, EUIPO and the intervener in their pleadings to Article 8(1)(b) and (5) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) and (5) of Regulation No 207/2009, as amended, the wording of which is identical. Moreover, since, 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.
A.      Admissibility of the cross-claim
28      Under Article 130(1) and (7) of its Rules of Procedure, on the application of the defendant, the Court may decide on inadmissibility or lack of competence without going to the substance of the case.
29      In the present case, EUIPO having sought a ruling on the inadmissibility of the cross-claim, the Court, taking the view that it has sufficient information available to it from the material in the file, has decided to rule on that application without opening the oral part of the procedure.
30      EUIPO argues that the cross-claim is inadmissible in that, first, the intervener is asking the Court to make a declaratory decision. Moreover,
it is directed against confirmatory statements with no legal effect. Secondly, the intervener has no interest in bringing an action against the contested decision, as it has obtained complete satisfaction as to its claims. In addition, it is not seeking annulment of the operative part, only of the grounds for the contested decision. Furthermore, the intervener’s interest in bringing an action is hypothetical
since, when the cross-claim was lodged, it was not certain that the applicant was going to challenge the assessments in question or that the Court was going to alter the finding that the ‘office functions’
services in Class 35 and the
‘entertainment; sporting and cultural activities’
services in Class 41 were different from the services covered by the earlier marks.
31      The intervener disputes that line of argument.
32      As a preliminary point, it is apparent from paragraph 10 above that, in the earlier decision, the opposition was rejected on the basis of Article 8(1)(b) and (5) of Regulation No 207/2009 for the different services. By contrast, the opposition was upheld on the basis of Article 8(1)(b) of that Regulation as regards the identical and similar services (annulment judgment, paragraphs 38, 43 and 56), without an assessment being made in respect of those same services under Article 8(5) of that Regulation, having regard to the likelihood of confusion already found.
33      On that basis, the intervener brought an action before the Court, in accordance with Article 67 and Article 72(4) of Regulation 2017/1001.
34      It should be emphasised that, in the case that gave rise to the annulment judgment, the matter was properly brought before the Court only inasmuch as the Fifth Board of Appeal of EUIPO had rejected the intervener’s claims, by allowing the opposition for the identical and similar services.
35      In that regard, it should be recalled that
whilst a judgment annulling a measure takes effect ex tunc and thus has the effect of retroactively eliminating the annulled measure from the legal system (see, to that effect, judgment of 25 March 2009, Kaul
v OHIM – Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraph 21 and the case-law cited), so that, after being referred back, the dispute before the lower instance
becomes pending again with regard to the points that were annulled, it should nevertheless be noted that the uncontested part of that measure, which has now become final, survives and has effect in the legal order of the European Union, in accordance with Article 71(3) of Regulation 2017/1001.
36      It should also be remembered that the operative part of a judgment must be read in the light of the grounds which have led to it and constitute its essential basis, in so far as they are necessary to determine the exact meaning of what was held in the operative part (see judgments of 13 December 2012, Commission
v Strack, T‑197/11 P and T‑198/11 P, EU:T:2012:690, paragraph 30 and the case-law cited).
37      In the present case, whilst the operative part of the annulment judgment merely states that the previous decision was annulled, without providing any further details, it is clear from the grounds of the annulment judgment that the annulment applied only to the identical and similar services mentioned in paragraphs 38, 43 and 56 of the annulment judgment.
38      It should also be noted that the parties agree that the applicant did not bring an action against the earlier decision in order to challenge the rejection of its opposition with regard to the different services.
39      Therefore, it is apparent from the foregoing that the fact that the earlier decision had become final with regard to the different services, and that its legality as regards those services can no longer be called into question before the Court (see, to that effect, order of 13 July
2017, myToys.de
v EUIPO – Laboratorios Indas (myBaby), T‑519/15, not published, EU:T:2017:502, paragraph 35
and the case-law cited), must be regarded as established.
40      As regards the first plea of inadmissibility raised by EUIPO, in the first place, it is noteworthy that, so far as concerns the first head of claim in the cross-claim, by which the intervener asks the Court to alter the contested decision
‘by declaring’ that the earlier decision has become final with regard to the different services, it must be recalled that such a head of claim, which seeks to obtain a declaratory judgment, must be rejected as having been brought before a Court with no jurisdiction to hear it (see, to that effect, judgment of 16 November 2011,
Dorma
v OHIM – Puertas Doorsa (doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS), T‑500/10, not published,
EU:T:2011:679, paragraph 17
and the case-law cited).
41      In the second place, as to there being no legal impact in respect of
the considerations relating to the different services, it should be observed
that, in paragraphs 14 and 15 of the contested decision, the Board of Appeal found that the Court had annulled the earlier decision in its entirety and that, accordingly, it had to re-examine the likelihood of confusion between the marks at issue with regard to all the services designated by the mark applied for.
42      On that basis, the Board of Appeal re-examined the different services. In that regard, it should be noted that EUIPO’s line of argument cannot succeed because, if the earlier decision should be regarded as being annulled in its entirety, in accordance with the erroneous premiss of the Board of Appeal, it follows that the Board of Appeal could not confirm the assessments in relation to the different services for the sake of completeness, but that it was obliged, in the present case, to re-examine them.
43      Therefore, the inevitable conclusion is that the Board of Appeal’s assessments in relation
to the different services are not merely confirmatory but have an effective legal scope, since they necessarily support the operative part of the contested decision as regards the different services.
44      Therefore, the first plea of inadmissibility must be upheld in so far as EUIPO submits that the intervener, by its first head of claim, is asking
the Court to make a declaratory decision. On the other hand, that same plea of inadmissibility must be dismissed as regards the merely confirmatory nature of the Board of Appeal’s assessments.
45      As regards the second plea of inadmissibility raised by EUIPO, it should be noted first of all
that the situation relied on by the intervener is not purely hypothetical since, when the cross-claim was introduced, the applicant had already submitted the application before the Court in which it disputed the difference found by the Board of Appeal with regard to the different services. The fact remains that EUIPO responded to those arguments without observing that the issue had been settled definitively in the absence of a challenge to the earlier decision with regard to the different services. In response, the intervener lodged its cross-claim simultaneously with its response to the main action, by devoting a part of that, inter alia, to the question of the scope of the dispute and the need for the different services to be excluded from it.
46      Similarly, having regard to the erroneous premiss of the Board of Appeal, noted at paragraph 42 above, there is no doubt that, if the scope of the services that are the subject of the present action is not specified, the Court must also adopt a position on the different services, since they necessarily support the operative part of the contested decision, as stated in paragraph 43 above.
47      Consequently, it must be held that the intervener is not referring to a hypothetical or purely future and uncertain scenario but to a real and current one, therefore the argument put forward by EUIPO must be dismissed as unfounded.
48      Next, it should be noted that, in re-examining the different services, the Board of Appeal de facto gave the applicant the opportunity to challenge the assessments in question before the Court, although the time limit for bringing an action concerning them, as they appeared in the earlier decision, had expired long before the delivery of the annulment judgment.
49      Consequently,
in the present case, it cannot validly be maintained that the intervener has won its case outright, given that in fact it finds itself obliged, once again, to defend its interests in relation to assessments that had become definitive and had acquired the authority of res judicata as regards the different services (see paragraph 39 above)
and given that the mark applied for could have been registered for those services since the expiry of the time limit for appeal referred to in Article 72(5) of Regulation 2017/1001, increased by the distance period provided for in Article 60 of the Rules of Procedure. The second argument put forward by EUIPO must therefore be dismissed as unfounded.
50      Lastly, as to the argument whereby EUIPO submits that the intervener is not seeking annulment of the operative part of the contested decision but only of its grounds, it should be noted, particularly as regards the head of claim put forward by the intervener in the alternative, that, in seeking annulment of the assessments in the contested decision which define the scope of the action, the intervener is implicitly, but necessarily, also seeking annulment of the operative part, in so far as that is supported, with regard to the different services, by the considerations defining the scope of the dispute,
for which reason those services were re-examined, as already stated in paragraphs 37 to 39 above.
51      Therefore,
it is appropriate to hold that the alternative head of claim seeks annulment not only of the grounds defining the scope of the dispute and, consequently, of the re-examination of the different services but also of the operative part of the contested decision, in so far as it is necessarily supported by those grounds. The third argument put forward by EUIPO
and, in the process, the second plea of inadmissibility,
must therefore be dismissed as unfounded.
52      It follows from the foregoing that the cross-claim is admissible in so far as it seeks annulment of the contested decision.
B.      The cross-claim and the scope of the dispute between the parties
53      By its cross-claim, the intervener has, in essence, put forward a single plea, challenging the scope of the dispute before the Court, as defined in the contested decision, and submits that the present dispute is limited to the identical and similar services, since the assessments of the different services have become final, in the absence of an appeal by the applicant. Therefore, to that extent, it is seeking annulment of the contested decision.
54      Whilst
allowing that the assessments made by the Board of Appeal as to the different services might be regarded as ‘constituting new, independent substantive findings’, EUIPO expresses doubts as to whether the Court may lawfully order the alteration, declaration or annulment thereof, as called for by the principal and alternative heads of claims in the cross-claim. In that regard, according to EUIPO, by the principal head of claims,
the intervener is seeking a declaratory decision. The alternative head of claim
concerns only the grounds for the contested decision and not the operative part. However, the grounds alone are not open to appeal.
55      The applicant submits, in essence, that it agrees with the intervener’s cross-claim pleading that the application for a trade mark should be registered in respect of the different services, namely the
‘office functions’ services in Class 35 and those of
‘entertainment; sporting and cultural activities’
in Class 41, because
the Board of Appeal ruled in that regard in the earlier decision under
Article 8(1)(b) and (5) of Regulation No 207/2009. By contrast, the applicant submits
that the identical and similar services were not assessed in the earlier decision by the Board of Appeal by reference to Article 8(5) of Regulation No 207/2009 and that, consequently, there was no decision in that regard that could have become final. Therefore, it contends that the cross-claim should be dismissed with regard to the forms of order based on Article 8(5) of Regulation No 207/2009 and covering the identical and similar services.
56      In the present case, the fact remains, first, that it was held in paragraph 39 above that the earlier decision had become final with regard to the different services and, second, that the head of claims put forward in the alternative in the cross-claim was seeking annulment not only of the grounds defining the scope of the dispute, and therefore the re-examination of the different services, but also of the operative part of the contested decision, in so far as that was necessarily supported by those grounds (see paragraph 51 above).
57      Therefore, it is apparent from the foregoing that the head of claim put forward by the intervener in the alternative must be allowed in so far as it seeks annulment of the operative part of the contested decision, necessarily supported by the assessments made under
Article 8(1)(b) and (5) of Regulation No 207/2009 with regard to the different services, namely the
‘office functions’
services in Class 35 and those of ‘entertainment; sporting and cultural activities’ in Class 41.
58      It follows that point 1 of the operative part of the contested decision must be annulled, in so far as it rules again
on the opposition by rejecting it as regards the different services, namely the
‘office functions’ services
in Class 35 and those of ‘entertainment; sporting and cultural activities’ in Class 41. With regard to those services, as explained in paragraph 35 above, it should be pointed out, as do the parties, that, in essence, the earlier decision still has effect in the EU legal system.
59      By contrast, it should be noted, as the applicant does and as is stated in paragraph 32 above, that the Board of Appeal did not, in the earlier decision, give a ruling on the identical and similar services under
Article 8(5) of Regulation No 207/2009, having regard to the likelihood of confusion already found under Article 8(1)(b) of that Regulation. Consequently, the alternative head of claim in the cross-claim must be dismissed as to the remainder.
60      Accordingly, the scope of the dispute before the Court in the present action is limited to the identical and similar services, namely the ‘advertising; business management; business administration’ services in Class 35 and those of ‘education; providing of training’ in Class 41. Accordingly, the Court will examine the dispute between the marks at issue under Article 8(1)(b) and (5) of Regulation No 207/2009 as regards those services.
61      Therefore, it must be made clear, having regard to the conclusions drawn in the context of the cross-claim (see paragraphs 28 to 60 above), that it is no longer necessary to rule on the merits of the arguments put forward by the parties in the main action as regards the different services, because those arguments have become irrelevant given the partial annulment of the contested decision (see paragraph 57 above) and the limitation of the scope of the main dispute to the identical and similar services (see paragraph 60 above).
C.      The main action
62      In support of the main action, the applicant relies, in essence, on two pleas in law. The first plea is based on four complaints alleging errors of assessment by the Board of Appeal, the first concerning the comparison of the services referred to in paragraph 60 above, the second the analysis of the similarities of the marks at issue, the third the evaluation of the distinctiveness of the earlier marks and the fourth the global assessment of the likelihood of confusion between the marks at issue, in accordance with Article 8(1)(b) of Regulation No 207/2009. By its second plea in law, the applicant submits that the Board of Appeal made an error of assessment as to the evidence produced for the purpose of establishing the reputation of the earlier marks, in finding that it was insufficient under Article 8(5) of that Regulation.
1.      The first plea in law, alleging incorrect assessment of the likelihood of confusion.
63      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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.
64      The risk that the public might 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 the goods or services in question, and taking into account all the factors relevant to the circumstances of the case, in particular the interdependence of the similarity of the signs and the similarity of the goods or services designated
(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).
65      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks 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).
(a)    The relevant public
66      It should be noted that, in paragraphs 17 and 18 of the contested decision, the Board of Appeal found, in essence, first, that the relevant public consisted of consumers in the European Union and, second, that the level of that public’s attention was high.
67      There is no reason to call into question those findings, which,
moreover, are not disputed by the applicant.
(b)    Comparison of the services in question
68      By its first complaint, the applicant alleges, in essence, that the Board of Appeal found a low level of similarity between the services in Class 35 and designated by the mark applied for and the services covered by the earlier marks, despite having found an identity of intended purpose and of the relevant public for those services.
69      EUIPO and the intervener dispute the applicant’s arguments.
70      According to settled case-law, in assessing the similarity between the services in question, all the relevant factors relating to them should be taken into account, including, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as
the distribution channels of the services
concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
71      In the first place, as regards the services designated by the mark applied for and in Class 35, the Board of Appeal held, first of all, that the ‘advertising’
services were intended to help professional consumers to promote their goods and services, reinforce their position in the market and gain a competitive advantage. Similarly, it found that the association services, namely promoting the interests of financial analysts and the ‘association services, namely the promotion of education, professional responsibility, ethics and integrity of financial analysts’, all in Class 42 and covered by the earlier marks noted in paragraph 6 above, were also professional services directed specifically at promoting the interests of their target public, financial analysts.
72      Next, it found that the ‘business management’ services relating to the mark applied for and the ‘association services’ in Class 42 and covered by the earlier marks all had a common intended purpose and were targeted
at the same relevant public consisting of professionals.
73      Lastly, the Board of Appeal held that the ‘business administration’ services designated by the mark applied for, which were in the broader category of commercial services and the ‘association services, namely promoting the interests of financial analysts’, as well as the ‘association services, namely the promotion of education, professional responsibility, ethics and integrity of financial analysts’ in Class 42 and covered by the earlier marks, consisted in organising available human and material resources efficiently so as to strengthen the market position of undertakings and to improve their competitiveness and operation.
74      Having regard to the identical intended purpose and the mutual relevant public in respect of the services or categories of services relating to the mark applied for and the abovementioned services in Class 42 and covered by the earlier marks, the Board of Appeal inferred that there was a low degree of similarity between them.
75      The applicant complains, in essence, that without any explanation and in contradiction of its findings on the identity of the intended purpose and of the relevant public as to the services in question, the Board of Appeal found only a low level of similarity between them. The applicant submits that, given the abovementioned findings, the Board of Appeal should have found the
‘advertising’
and ‘business management’
services designated by the mark applied for to be identical, or at least very similar, to the services covered by the earlier marks. Likewise, those services should have been assessed as having at least an average degree of similarity with the ‘business administration’ services relating to the mark applied for.
76      In the first place, it should be stated at the outset, as regards the services in Class 35, that, even if the
‘advertising’, ‘business management’ and ‘business administration’ services essentially share the same intended purpose and the same relevant public as the services covered by the earlier marks, the services relating to the mark applied for differ in use, utility and practical application from the ‘association services, namely promoting the interests of financial analysts’ and the
‘association services, namely the promotion of education, professional responsibility, ethics and integrity of financial analysts’.
77      The context and the objective of
using those services differ because, unlike the services designated by the mark applied for, which relate to routine management (see, to that effect, judgment of 30 September 2010,
PVS v OHIM – MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, not published, EU:T:2010:419, paragraph 51), the services covered by the earlier marks tend towards the promotion of interests and values. The distinction between routine management and promotion, combined with the public and the intended purpose of the services in question being indissociable, confirm that there is little similarity between the services in question. The low
degree of similarity between those services is also confirmed by the fact that the services relating to
the mark applied for, unlike the services covered by the earlier marks, are not intended for a public consisting exclusively of people working in the financial sector. The services relating to the mark applied for are described in a more general way and also seem to be targeted at a public outside
the financial sector, whereas the services for which the earlier marks were registered are targeted specifically at financial analysts.
78      Consequently, the Board of Appeal was correct in finding that the ‘advertising’, ‘business management’ and ‘business administration’
services in Class 35 and designated by the mark applied for had a low degree of similarity with the ‘association services, namely promoting the interests of financial analysts’ and the ‘association services, namely the promotion of education, professional responsibility, ethics and integrity of financial analysts’
in Class 42 and covered by the earlier marks.
79      In the second place, as regards the services in Class 41, it must be held that there is no need to call into question the Board of Appeal’s finding, moreover not disputed by the applicant, as to the identity of the
‘education; providing of training’ services designated by the mark applied for with the ‘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’ covered by the earlier marks, since
the latter are included in the former. The same applies to the similarity which the Board of Appeal found between those services relating to the mark applied for and the ‘association services, namely promoting the interests of financial analysts’ and the ‘association services, namely the promotion of education, professional responsibility, ethics and integrity of financial analysts’, which have the same objective (training, guidance) and are targeted at a public that will perceive that those services may be marketed under the same brand.
80      It follows from the foregoing that the applicant’s first complaint must be rejected as unfounded.
(c)    Comparison of the marks at issue
81      By its second complaint, broken down into three arguments, the applicant challenges the assessment of the visual, phonetic and conceptual similarities between the marks at issue, maintaining that they have at least an average, even high, degree of similarity as regards the earlier figurative mark, contrary to the Board of Appeal’s finding of a low degree of similarity.
82      EUIPO and the intervener dispute the applicant’s arguments.
83      In that regard, it should be remembered that, 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, aural 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).
84      It is also apparent from the case-law that the perception of marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35
and the case-law cited).
85      Thus, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components (judgment of 14 December 2017, N & C Franchise v EUIPO – Eschenbach Optik (OJO sunglasses), T‑792/16, not published, EU:T:2017:908, paragraph 29).
(1)    The distinctive and dominant elements of the marks at issue
86      As a preliminary point, it should be noted that, in the contested decision, the Board of Appeal held, in essence, that the distinctive and dominant elements of the marks at issue were abbreviations or acronyms in capital letters, respectively ‘CCA’ for the mark applied for and ‘CFA’ for the earlier marks.
87      As regards the earlier marks, the Board of Appeal found, in essence, that the sequence of capital letters
‘C’, ‘F’ and ‘A’
constituted their distinctive and dominant element. The earlier word mark consisted solely of the capital letters ‘CFA’, whereas the earlier figurative mark consisted of the capital letters
‘CFA’ of a considerably large size, written in white letters on a black, oval-shaped background, around which were placed the word elements ‘CHARTERED FINANCIAL ANALYST’ (designating a qualified professional who examines financial matters),
written in capital letters of a much smaller size. Therefore, the sequence of the capital letters ‘C’, ‘F’ and ‘A’
was the most distinctive and dominant element due to its central position and its larger dimensions in relation to the other word elements in the earlier figurative mark. The other word elements written in smaller characters would be construed as indicating the intended purpose or the consumer of the services concerned in a commercial context and would have only a limited effect, given their descriptive character,
as would the figurative aspect of the earlier figurative mark, the simplicity of which precludes any independent meaning being attributed to it.
88      As regards the mark applied for, the Board of Appeal held that it consisted of the abbreviation in capital letters
‘CCA’ and the word elements
‘CHARTERED CONTROLLER ANALYST’ and
‘CERTIFICATE’, arranged on three levels and written in stylised capital letters in blue and grey. According to the Board of Appeal, the sequence of capital letters
‘C’, ‘C’ and ‘A’ in the upper section constituted the distinctive and dominant element of the mark applied for, due to its central position and its larger dimensions relative to the other elements. Similarly, the wording ‘chartered controller analyst’
(designating a qualified professional who examines issues relating to control), written in smaller characters appearing directly below the capital letters
‘C’, ‘C’ and ‘A’, indicated that those letters constituted an abbreviation or an acronym.
89      Even
if the applicant does not call into question the Board of Appeal’s assessments as to the distinctive and dominant elements of the marks at issue, it is noteworthy that the applicant misinterprets the analysis concerning the secondary elements of the mark applied for.
90      According to the applicant, the Board of Appeal was right, during the analysis of the similarities of the marks at issue, not to take account of the secondary elements of the mark applied for. It is apparent, in essence, from paragraphs 21 and 24 of the application that the other word elements of the mark applied for must be regarded as negligible and that, consequently, there is no need to take account of them during the comparison of the marks at issue.
91      In that regard, it should be recalled that the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June
2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41
and the case-law cited).
It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June
2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could in particular be the case where that element is likely, by itself, to dominate the image that the relevant public has of the mark, with the result that all the other components of the mark are negligible within the overall impression created (judgement
of 20 September
2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
92      In the present case, the Board of Appeal described the sequence of capital letters, respectively ‘C’, ‘C’ and ‘A’ and ‘C’, ‘F’ and ‘A’, as being distinctive and dominant, specifying that the word elements of the mark applied for,
in capital letters ‘CHARTERED CONRTOLLER ANALYST’, and the wording ‘chartered financial analyst’ in
the earlier figurative mark, constituted an indication of the intended public or purpose of the services in question, in smaller writing below or around the distinctive and dominant elements of those marks, which considerably reduced their distinctiveness.
93      Despite their reduced impact, the Board of Appeal did not
ignore the presence of either the secondary word elements or the stylisations of the figurative marks at issue, as is apparent from paragraphs 30, 38 to 40 and 43 of the contested decision.
94      Furthermore, it should be noted that the case-law arising from the judgment of 15 March 2012, Strigl and Securvita (C‑90/11 and C‑91/11, EU:C:2012:147), as well as that arising from the judgment of 22 October 2015, BGW (C‑20/14, EU:C:2015:714), relied on by the applicant, cannot properly be transposed to the present case, due to the figurative character of two of the three marks at issue. The figurative and positioning aspects of the word elements and their respective sizes cannot be ignored in the present
case. Similarly, as specified in paragraph 31 of the judgment of 22 October 2015, BGW (C‑20/14, EU:C:2015:714), the issue of the distinctiveness of an abbreviation juxtaposed with a word combination must be assessed on a case-by-case basis, according to the perception which the relevant public has of the interdependence between the various elements of the sign and of the sign as a whole. However, in the present case, the relevant public will perceive the abbreviations in capital letters ‘CCA’ and ‘CFA’ differently due to their size and to their positioning relative to the rest of the elements of the signs at issue.
95      It follows that the applicant misinterpreted the assessment made, correctly, by the Board of Appeal, whereby the sequences of capital letters
‘C’, ‘F’ and ‘A’ and ‘C’, ‘C’ and ‘A’
respectively are the distinctive and dominant elements of the marks at issue, whereas the other word and figurative elements of those marks were described as secondary elements and as having a reduced impact due to their simplicity, their smaller size and their descriptive character, although not
considered negligible in terms of the case-law cited in paragraph 91 above. Therefore, all the constituent elements of the marks at issue should be taken into account, by weighting their impact on the analysis of the similarities according to their relative weight.
(2)    Visual, phonetic and conceptual comparison of the marks at issue
96      In paragraphs 31 to 43 of the contested decision, the Board of Appeal considered in turn the similarities of the mark applied for to the earlier word mark and the earlier figurative mark. On the one hand it found, in essence, that there was a low degree of visual and phonetic similarity between the mark applied for and the earlier word mark. By contrast, it found that those marks were conceptually different, due to the lack of meaning in the earlier word mark. On the other hand, it considered that there was a degree of visual and phonetic similarity ranging from low to medium
between the mark applied for and the earlier figurative mark. By contrast, it found that the conceptual similarity between those marks was low.
97      As regards the comparison with the earlier word mark, the applicant submits, in essence, that the Board of Appeal erred in finding a low degree of visual and phonetic similarity. According to the applicant, that degree should have been assessed as being at least average. As for the comparison with the earlier figurative mark, the applicant claims, in essence, that the similarity between the marks at issue should have been assessed as being at least medium and not as ranging from low to medium. In that regard, the applicant disputes the semantic content found by the Board of Appeal as regards the word elements of the figurative marks at issue and submits that they are not only similar but identical, since those terms are synonymous in the context of marketing the services in question.
98      EUIPO and the intervener dispute the applicant’s arguments.
99      As a preliminary point, it is apparent from the case-law relating to short marks, transposable to the present case due to the distinctive and dominant elements of the marks at issue, consisting of three letters (see paragraph 85 above), that the shorter the signs, the easier it is for the relevant public, which in the present
case exhibits a high level of attention, to perceive clearly the differences between them (see, to that effect, judgments of 26 April
2023, Volkswagen v EUIPO – XTG (XTG), T‑154/22, not published, EU:T:2023:218, paragraph 69,
and of 13 September 2023, Gürok Turizm ve Madencilik v EUIPO – Darvas and Pap (LΛΛVΛ), T‑473/22, not published, EU:T:2023:543,
paragraph 51
and the case-law cited).
100    Similarly, it should be noted that the brevity of the distinctive and dominant elements of the marks at issue enables consumers to better understand variations in their spelling and that such differences, however insignificant, are capable of creating a different overall impression (see, to that effect, judgments of 13 February
2007, Ontex v OHIM – Curon Medical (CURON), T‑353/04, not published, EU:T:2007:47, paragraph 70,
and of 12 July
2019, MAN Truck & Bus v EUIPO – Halla Holdings (MANDO), T‑792/17, not published,
EU:T:2019:533, paragraph 58
and the case-law cited).
101    Moreover, in accordance with the case-law regarding signs in which the word element is relatively short, transposable in the present
case due to the distinctive and dominant elements of the marks at issue, consisting of three letters (see paragraph 85 above), account should be taken of the fact that, in such signs, the central elements are as important as the elements at the beginning and at the end (see judgment of 11 October 2023, Pascoe pharmazeutische Präparate v EUIPO – Novartis Pharma (PASCELMO), T‑435/22, not published, EU:T:2023:610, paragraph 46 and the case-law cited).
(i)    Comparison with the earlier word mark
102    First of all, as to the visual aspect, the Board of Appeal held, in paragraphs 31 to 33 of the contested decision, that the abbreviation in capital letters
‘CCA’
in the mark applied for coincided, in the first and third capital letters,
‘C’ and ‘A’, with the earlier word mark CFA. By contrast, they were differentiated by their second capital letter, ‘C’ and ‘F’
respectively, and by the other word elements in capital letters in the mark applied for, ‘CHARTERED CONTROLLER ANALYST’ and
‘CERTIFICATE’, although those words had less impact. Therefore, having regard to the case-law cited in paragraphs 99 and 100 above, the Board of Appeal held that the marks at issue had a low degree of visual similarity, since a difference in one character, even when placed in the centre, together with the different structure of the signs at issue, reduces the similarity resulting from the coincidence of the first and third characters of the word elements identified as distinctive and dominant.
103    In that regard, the applicant submits, in essence, that the slight difference between the earlier word mark and
the dominant element of the mark applied for does not generate a different overall impression. The coincidence within the first letter has a considerable impact on the visual similarity, given that, in principle, consumers would pay more attention to the beginning of the signs concerned than to the end. Similarly, the identity within the last letter of the earlier mark is far more relevant and visually perceptible than the distinction within the intermediate letter, which does not significantly alter the visual effect. According to the applicant, the Court had made a previous ruling, in paragraph 66 of the judgment of 23 October 2002, Institut für Lernsysteme v OHIM – Educational Services (ELS) (T‑388/00, EU:T:2002:260), that the divergence of one single letter did not constitute a significant visual difference where two of the three letters were identical and were in the same order and position. Lastly, the applicant submits that account should also be taken of the fact that average consumers only rarely have an opportunity to make a direct comparison between
the different marks in question but must rely on the imperfect image they have retained in their
mind.
104    EUIPO and the intervener dispute the applicant’s arguments.
105    First of all, as to the visual aspect, it should be noted that the only elements of similarity between the marks at issue are in the first and third capital letters ‘C’ and ‘A’, which are present in the same order, in the earlier mark and in the distinctive and dominant element of the mark applied for.
106    By contrast, the marks at issue differ in the central
capital letters ‘F’ and ‘C’ respectively from the earlier word mark and from the distinctive and dominant element of the mark applied for, as well as in the presence, admittedly not decisive but nonetheless
significant, of the secondary word elements in capital letters ‘CHARTERED CONTROLLER ANALYST’ and ‘CERTIFICATE’ and the figurative aspects of the mark applied for, which, in the perception of the relevant public, constitute an additional element of dissimilarity between the marks at issue.
107    Consequently, having regard to the case-law cited in paragraphs 99 to 101 above, the significance of the coincidence of the first and third characters in the sequence of capital letters ‘C’, ‘C’ and ‘A’ and
‘C’, ‘F’ and ‘A’ is greatly reduced by the differences in the length and structure of the marks at issue, in addition to those mentioned above.
108    That finding is not called into question by paragraph 66 of the judgment of 23 October 2002, ELS (T‑388/00, EU:T:2002:260), relied on by the applicant, as that cannot be applied to the case at hand, given that the visual difference between the marks at issue affects not only a single letter but also the different structure of the marks at issue, as well as the secondary elements of the mark applied for.
109    Similarly, having regard to the different structure of the marks at issue, the imperfect image of those marks that the consumer has retained in his mind will necessarily be different, so that the fact put forward by the applicant that the average consumer will only rarely be able to make a direct comparison between the different marks in question will not give rise to any visual similarity.
110    Accordingly, the Board of Appeal was right in finding that the marks at issue had a low degree of visual similarity, so that it is necessary to reject the applicant’s first argument as unfounded.
111    Next, as to the phonetic aspect, the Board of Appeal held that the marks at issue would be pronounced as abbreviations and that it was unlikely that the relevant public would pronounce the other word elements of the mark applied for, since consumers are generally more attentive to the beginning of a sign than to its end. Consequently, the Board of Appeal found a low degree of phonetic similarity between the marks at issue.
112    According to the applicant, the number of syllables and the identical pronunciation of the distinctive and dominant elements are not affected by the slight difference in the central consonant, which is barely perceptible. According to the applicant, there is reason to suppose that the three letters of the distinctive and dominant elements of the marks to be compared will be pronounced separately and completed by vowels when those letters are consonants. Therefore, according to the applicant, the combinations of the capital letters
‘C’,
‘F’ and ‘A’, pronounced ‘ce’,
‘ef’
and ‘aa’, should be compared with those of ‘C’, ‘C’ and ‘A’, pronounced ‘ce’, ‘ce’ and ‘aa’. The sequence of the vowels is almost identical: ‘e’, ‘e’, ‘a’ and ‘e’, ‘e’,
‘a’,
while the sequence of dominant sounds differs only by the central element: ‘e’, ‘f’, ‘a’
and ‘e’, ‘e’, ‘a’.
The marks compared all have three syllables and have identical first and last syllables. Similarly, the difference in the central syllable ‘ef’ in comparison with ‘ce’ is not so striking that, when the other syllables are identical, there is a difference in the overall phonetic impression. Consequently, the applicant submits that the phonetic similarity is at least average.
113    EUIPO and the intervener dispute the applicant’s arguments.
114    EUIPO endorses the Board of Appeal’s reasoning as set out in paragraph 102 and expressly refers to it.
115    According to the intervener, all the words of the mark applied for, namely ‘chartered controller analyst’ and ‘certificate’ will be pronounced. Those words are intended to explain the acronym in capital letters CCA, to emphasise the link between them and to support the public’s perception of the corresponding phrase, by simplifying its use and making it easier to remember. That situation is similar to those in the cases that gave rise to the judgments of 15 March 2012, Strigl and Securvita (C‑90/11 and C‑91/11, EU:C:2012:147) and of 7 May 2009, Klein Trademark Trust v OHIM – Zafra Marroquineros (CK CREACIONES KENNYA) (T‑185/07, EU:T:2009:147).
116    In that regard, as the Board of Appeal also noted, given the structure of the marks at issue and the presentation of the initial or only word element of the marks at issue in abbreviated form, it is very likely that only the distinctive and dominant elements, namely the elements in capital letters ‘CFA’ and ‘CCA’, will be pronounced by the relevant public.
117    That is also due to the fact that the average consumer will orally tend to abbreviate a mark comprising several words, so as to make it easier to pronounce, as was, in essence, rightly stated by the Board of Appeal in paragraphs 35 and 36 of the contested decision. Similarly, as explained in paragraph 94 above, the case-law relied on by the intervener cannot be applied in the present case.
118    Consequently, it being understood that, in accordance with the case-law cited in paragraph 101 above, each letter within a short mark has an identical relative weight, whatever its position, and that two of the three letters of the distinctive and dominant elements are identical and presented in the same order, the degree of phonetic similarity must be regarded as average and not low (see, to that effect, judgment of 12 June
2019, EOS Deutscher Inkasso-Dienst v EUIPO – IOS Finance EFC (IOS FINANCE), T‑583/17, not published, EU:T:2019:403, paragraph 84).
119    It follows that the Board of Appeal made an error of assessment in describing the degree of phonetic similarity between the marks at issue as low instead of average, having regard to the rhythm and to the number of similar syllables. However, the scope of that error will be examined during the global assessment of the likelihood of confusion, on the understanding that the finding of an error does not justify the automatic annulment of the contested decision, except in so far as it would have any effect on the resolution of the dispute (see, to that effect, judgment of
15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 70).
120    Lastly, as regards the conceptual comparison, there is no need to call into question the assessment by the Board of Appeal, not disputed, moreover, by the applicant, that the earlier word mark, CFA, was devoid of meaning, unlike the mark applied for, CCA, due in particular to the semantic meaning of the word elements ‘chartered controller analyst’ and
‘certificate’. However, where one of the marks at issue has significance for the relevant public and the other mark has none, it must be held that the marks in question present conceptual differences (see, to that effect, judgment of 19 September
2017, RP Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published,
EU:T:2017:630, paragraphs 88
and 89). Conceptually, the signs are therefore different, as the Board of Appeal rightly found.
(ii) Comparison with the earlier figurative mark
121    First of all, as to the visual aspect, the Board of Appeal held, in paragraphs 39 and 40 of the contested decision, that the earlier figurative mark, CFA CHARTERED FINANCIAL ANALYST, had a low to medium degree of visual similarity to the mark applied for. The Board of Appeal held that the sequence of capital letters
‘C’, ‘F’
and ‘A’ constituted the dominant element, whereas the other elements were secondary and of limited impact, as was the stylisation of the earlier mark. Those
considerations also applied to the mark applied for. The Board of Appeal noted that the figurative marks at issue shared not only the first and third letter of their respective acronyms but also the words
‘chartered’ and
‘analyst’.
By contrast, they differed not only by the second letter of those acronyms but also by the presence of the words ‘controller’ and ‘certificate’ in the mark applied for and ‘financial’ in the earlier figurative mark.
122    The applicant submits in that regard, in essence, that the similarity between the marks at issue should have been assessed as at least medium and not as between low and medium. In that regard, the applicant disputes the semantic content found by the Board of Appeal as to the other word elements of the figurative marks at issue and submits that they are not only similar but identical, since those words are synonymous in the context of marketing the services in question.
123    EUIPO and the intervener dispute the applicant’s arguments.
124    As a preliminary point, it should be remembered that,
in accordance with the conclusion drawn in paragraph 95 above, it is necessary, when comparing the marks at issue, to take account
of all the secondary and non-negligible elements, in the knowledge that their relative weight within those marks is low, even very low. In that context, it must be held that, in addition to the identity of the first and third letters of each respective acronym, the marks at issue also contain the identical words ‘chartered’ and ‘analyst’. Similarly, the structure of those marks is very similar, consisting of an acronym and of an explanatory phrase in three words. However, they are distinguished by the presence of the words
‘controller’ and ‘certificate’ within the mark applied for and
‘financial’ within the earlier mark. In addition, the stylisation and the structure of the marks at issue, one on three levels, the other in oval form, are also different, even if those elements have only a limited impact, having regard to their decorative character.
125    Therefore, having regard to the similarities and dissimilarities identified, it must be held that the signs at issue have an average degree of visual similarity. It follows that the Board of Appeal’s finding that the signs at issue had a degree of similarity ranging from low to medium must be clarified, in the sense that the degree of similarity must be considered to be average.
126    Next, as regards the phonetic comparison, the Board of Appeal held, in paragraph 41 of the contested decision, that consumers tended to abbreviate marks consisting of acronyms and that, accordingly, the marks at issue were likely to be pronounced as an abbreviation or as an acronym consisting of three letters, coinciding in the first and third capital letters ‘C’ and ‘A’ and differing in the central capital letter, respectively ‘F’ for the earlier mark and ‘C’ for the dominant element of the mark applied for.
According to the Board of Appeal, the other elements of the marks at issue were unlikely to be pronounced in the present case.
127    According to the applicant, in essence, for the same reasons as those already set out in paragraph 112 above, as regards the phonetic comparison with the earlier word mark, the marks at issue are phonetically similar to an average degree.
128    In that regard, as already noted in paragraphs 116 and 117 above, it is very likely that only the distinctive and dominant elements in the capital letters, ‘CFA’ and ‘CCA’, will be pronounced by the relevant public.
129    Therefore, having regard to the foregoing, it must be held that the signs at issue have an average degree of phonetic similarity. It follows that the Board of Appeal’s finding that the signs at issue had a degree of similarity ranging from low to medium must be clarified, in the sense that the degree of similarity must be considered to be average.
130    Lastly, as regards the conceptual comparison, the Board of Appeal held in paragraphs 42 and 43 of the contested decision, first, that the English expressions used within the marks at issue were commonly used in the financial sector and, therefore, were understood by the relevant public, and, secondly, that the marks at issue coincided in the meanings of the words
‘chartered’ and ‘analyst’. By contrast, they differed in the meanings of the words
‘controller’ and ‘certificate’ within the mark applied for and ‘financial’ within the earlier mark. However, since
the Board of Appeal considered that the impact of those elements was reduced, it found the level of conceptual similarity to be low.
131    According to the applicant, in essence, the Board of Appeal did not take into account the meaning of all the verbal elements of the phrase clarifying the acronyms.
The applicant claims,
in particular, that the Board of Appeal failed to examine in detail the meanings of the words ‘controller’ and ‘financial’, which are identical because, essentially, in the financial or business sector, a controller is none other than a financial manager.
Therefore, according to the applicant, the phrases
‘chartered financial analyst’ and ‘chartered controller analyst’ are identical, as they are synonyms with a very similar, if not identical, meaning. Accordingly, the degree of similarity should have been assessed as being high and not low.
132    EUIPO and the intervener dispute the applicant’s arguments.
133    In that regard, it should be remembered that, as stated in paragraph 95 above, the conceptual comparison should take account not only of distinctive and dominant elements but also of secondary and non-negligible elements. In that context, account should be taken not only of the meaning of each word element in isolation but also of the concept behind the sum of those elements.
134    In the present case, the two marks at issue refer to the concept of certification of expert analysts. That meaning may be surmised
without any effort due to the word ‘chartered’, which,
when that adjective designates a person, means ‘qualified to carry out a particular job’. Since the two marks at issue include that word, it is clear that the intended services relate, at least in part, to training certified by a diploma or by a certificate of achievement. It is also clear that the English word ‘certificate’ reinforces that concept within the mark applied for.
135    However, the expertise acquired in each of the training courses offered under the marks at issue seems to relate to the acquisition of analytical skills in different areas of expertise. Whilst the word ‘financial’ is undeniably linked to the financial sector, the word ‘controller’ does not necessarily evoke
that sector. Rather, the word ‘controller’ is used in various sectors requiring a qualified person to monitor the status or progress of a process or the pursuit of an objective.
136    Consequently, it must be held that the marks at issue do certainly evoke the concept of certified training, which allows candidates to practise a particular profession. However, that finding must be qualified by the fact that the training offered under the earlier mark is closely linked to financial analysis and, generally, to services in the financial sector, whereas the training
offered under the mark applied for does not evoke any direct connotation
with a particular field of activity, since the
analyst with control certification may have various occupations.
137    In addition, it is necessary to take account, as EUIPO did, of the fact that, where conflicting signs share only descriptive terms, as in the present
case, the conceptual similarity must be regarded as low (see, to that effect, judgments of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 51, and of 15 October 2020, Laboratorios Ern v EUIPO – Bio-tec Biologische Naturverpackungen (BIOPLAST BIOPLASTICS FOR A BETTER LIFE), T‑2/20, not published, EU:T:2020:493, paragraph 67).
138    Similarly, supposing that the conceptual similarity resulting from the common elements ‘chartered’
and ‘analyst’ is considered to be high, it remains the case that, in accordance with case-law consistently applied, where the conceptual similarity between the marks at issue rests solely on the presence
of terms in common which are not very distinctive, or even descriptive, as in the present case, it plays a limited role and has less
impact on the assessment of the likelihood of confusion (see judgment of 15 October 2020, ROBOX, T‑49/20, not published EU:T:2020:492, paragraph 92 and the case-law cited).
139    Having regard to the foregoing, it must be held that the Board of Appeal was right in finding that the marks at issue had a low degree of conceptual similarity.
(d)    The distinctiveness and reputation of the earlier marks
140    In paragraphs 45 to 55 of the contested decision, the Board of Appeal examined the evidence produced by the applicant in order to establish the genuine use and reputation of the earlier marks.
141    In doing so, the Board of Appeal examined, inter alia, a survey carried out by an independent market research company GFK in 2008 entitled
‘The Global Brand Awareness Study’ (item 2); internet extracts showing that the CFA programme is offered in 23 Member States (item 3); a brochure in German (item 4) and item 5 providing information on the programme, its affiliates and its partners;
a report from 2011 listing the main employers of CFA institute members (item 6), as well as other reports from the period 2012-2015 which give an overview of the main activity and of the use of the CFA marks in the context of the provision of professional association services relating to finance, investment and certification services (item 8); advertising expenditure by country, including USD 260 000
in Germany from 2008 to 2012 (item 7); examples of advertising campaigns and press coverage (including independent publications), demonstrating, inter alia, that the applicant enjoyed considerable media presence at international
level, including in the United Kingdom, Spain and Germany
(items 9 to 13, 17, 18 and 20); a compilation of numerous press releases and media reports on activities related to the intervener (and to the ease with which its certification could be obtained), and to programmes showing the CFA marks (items 14 and 15); as well as a 2017 report demonstrating an increase in inscription revenues, investments made and advertising expenditure. Those documents concern the use of the earlier EU marks during the period 2008 to 2017 in several countries, particularly in Germany.
142    The Board of Appeal held that, as a whole, the independent survey carried out in 2008 and the other items produced by the applicant permit the inference that the acronym ‘CFA’
in capital letters is
likely to be known to the relevant public, at least in Germany, due to the intensive use made of it and to the investments, the expenditure and its media presence. Accordingly, the Board of Appeal found it possible to infer from the evidence that the acronym ‘CFA’ had an enhanced distinctiveness acquired through use in Germany at the relevant date. However, it considered that the evidence was not sufficiently solid to demonstrate reputation.
143    Consequently, the Board of Appeal held, in essence, that the normal inherent distinctiveness of the earlier word mark had been acquired through
its use, in particular through the use of the acronym that constituted that word mark. By contrast, as regards the earlier figurative mark, the inherent distinctiveness of which was automatically attenuated by reason
of the phrase that defined
the initial acronym, the Board of Appeal found that, due to the use made of that acronym, the distinctiveness of that earlier figurative mark had become normal.
144    The applicant disputes the Board of Appeal’s findings and submits, in essence, that it was wrong to find that the marks had acquired, through use,
only an enhanced distinctiveness and not reputation. According to the applicant, it had produced numerous pieces of evidence sufficient to support a clear finding that the earlier marks enjoyed a significant reputation among the general public, at least in Germany. The applicant claims, in essence, that the evidence it produced demonstrates an increase in the level of its reputation, due in particular to the advertising campaigns, the wide international media coverage and its presence in 23 EU Member States. In its view,
that increase is corroborated by the very positive development, both in its sales figures, its investment or advertising expenditure and the value of its earlier marks, and in the
marked increase in candidates who wish to obtain its certification, its members or even
visitors to its websites. The applicant submits, therefore, that
recognition of the CFA mark, which has existed since 1947, has increased significantly between the completion of the survey in 2008 (item 2) and the filing of the trademark application in 2016.
145    EUIPO and the intervener dispute the applicant’s arguments.
146    As a preliminary point, it should be recalled that, in order to assess whether a mark enjoys a higher distinctiveness due to the recognition that the relevant public has of it, account has to be taken of all the relevant circumstances of the case, namely, in particular, the market share held by that mark, the intensity, geographical extent and duration of its use, the amount invested by the undertaking in its promotion, the proportion of the relevant class of persons who, because of that mark, identify goods or services as originating from a particular undertaking, and statements made by chambers of commerce and industry or other professional associations (see judgment of 8 March 2023, Sympatex Technologies v EUIPO – Liwe Española (Sympathy Inside), T‑372/21, not published, EU:T:2023:111, paragraph 126 and the case-law cited).
147    It is a matter of assessing the capacity of that mark to identify the goods or services for which it has been registered as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see judgment of 13 September 2018, Birkenstock Sales v EUIPO, C‑26/17 P, EU:C:2018:714, paragraph 31 and the case-law cited).
148    As regards, more particularly, reputation, it should be recalled that a mark has a reputation where it is known, within a substantial part of the relevant territory, by a significant part of the public concerned by the goods or services covered by that mark. In that regard, account should be taken, in particular, of the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (see 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).
149    In the present case, it should be stated at the outset that the evidence produced by the applicant with a view to establishing the reputation of the earlier marks in question demonstrates the enhanced distinctiveness
acquired through use of the acronym ‘CFA’ in capital letters, as the Board of Appeal rightly stated in paragraph 57 of the contested decision, due to intensive use of the word mark CFA.
150    First, the period covered by the evidence covers more than eight years (2008-2017) and, from 2008, that evidence demonstrated a certain knowledge of the earlier marks, even if the target public for the survey is not known. Second, even if the majority of sources are internal or related to the applicant, their number and their variety remain very significant. Third, even if it is not possible to know the proportion of consumers who recognise the earlier marks, it may be inferred that the relevant public has some knowledge of them due to the media coverage and communication as to those marks. Fourth, although it cannot be established with certainty what the budget was for the development of each of the earlier marks or for
their advertising, it may be inferred that, over more than eight years, significant amounts were spent on their promotion. Lastly, fifth, even though the applicant’s share of the market is not known, it must be held that, having regard to its long presence on the market and to the efforts to promote and develop its marks, those marks have an enhanced distinctiveness due to the recognition
that the relevant public necessarily has of them.
151    Nonetheless, even if the increased use of the word mark and of the acronym of the figurative mark seems intense from a quantitative perspective and covers a certain period in time,
it is not possible, from a qualitative perspective, to establish what capacity
they have, within the relevant public, to identify the services offered as originating from the applicant.
Therefore, it is not possible to determine whether the earlier marks are known by a significant part of the public concerned by the services in question, as required by the case-law cited in paragraph 48 above. Consequently, no reputation can be recognised in respect of the earlier marks.
152    That finding is not called into question by the applicant’s arguments.
153    First of all, even if the evidence demonstrates extensive media coverage, investments in the development of its brands and in their advertising, and a certain interest on the part of the relevant public in the services offered by the applicant, it is undeniable that none of the evidence produced gives any concrete or independent information as to knowledge of the earlier marks by a significant part of the public concerned by the services designated by those marks, in accordance with the case-law cited in paragraph 148 above. The applicant has not provided sufficient information as to the market share or the relevant public’s knowledge of the services for which the reputation is claimed at the relevant date, and that omission cannot be corrected, even when the available data are correlated with the documented advertising activities.
154    Next, it should be noted that, apart from the independent survey from
2008, the evidence submitted by the applicant consists, essentially, of brochures and internal reports as well as press and advertising campaign articles initiated by the applicant itself. However, even if, as rightly noted by the Board of Appeal, most of the evidence did not mention the earlier marks or provide a breakdown of investments by country or by mark, or give any information about the period, on the whole, by taking account of that survey in particular and of the other evidence produced by the applicant, the Board of Appeal was right to infer that, due to the intensive use made of the acronym ‘CFA’ in capital letters, over a significant period of time, that acronym was likely to have been known to consumers of professional association services relating to financial analysis, training or guidance concerning a certification programme in that sector and related publications, at least as regards Germany.
However, it is not possible to establish objectively and with any degree of certainty that a significant part of the relevant public recognises the earlier marks.
155    Lastly, it is noteworthy that, in its arguments, the applicant does not call into question the merits of the Board of Appeal’s analysis by contesting an error it may have made. On the contrary, the applicant merely sets out its own analysis of the evidence, claiming that it demonstrates that the earlier marks have a reputation, at least in Germany. Similarly, the applicant does not provide any information to explain the shortcomings of that evidence as noted by the Board of Appeal, for example in paragraphs 46, 55 and 57 of the contested decision. In addition, whilst it is clear that the certification ‘CFA’ is known in certain financial sectors to be difficult to obtain and that, for the initiated, that difficulty gives the certification a certain prestige, it should nevertheless be observed that it is not sufficient, for the purposes of establishing a reputation, to demonstrate the relative prestige or value of the marks.
156    Accordingly, having regard to the foregoing, it is appropriate to reject the applicant’s arguments and to confirm the Board of Appeal’s finding that, first, the normal inherent distinctiveness of the earlier word mark CFA has been enhanced by the use of
its acronym. Second, as regards the earlier figurative mark, the inherent distinctiveness of which was attenuated due to the phrase that clarified the initial acronym (see paragraph 143 above), the Board of Appeal was correct in finding that, given the use made of that acronym, the distinctiveness of the earlier figurative mark CFA CHARTERED FINANCIAL ANALYST had become normal.
(e)    Global assessment of the likelihood of confusion
157    The Board of Appeal found, in paragraphs 63 and 64 of the contested decision, that, notwithstanding the fact that some of the services in question had been regarded as partly identical and partly similar, there was no likelihood of confusion between the marks at issue, even if the earlier marks had an enhanced distinctiveness in Germany, as the similarity between the marks at issue was so low that the relevant public could not confuse them. The dominant elements of the signs had only three letters and, in accordance with the case-law, any difference in one letter would be noticed by a
highly
attentive consumer.
158    The applicant submits that the global assessment of the likelihood of confusion between the marks at issue is marred by a contradiction between the findings relating to the similarity of the figurative marks at issue and the degree of similarity found in the context of the global assessment. In
paragraphs 40 and 41 of the contested decision, the Board of Appeal described the degree of visual and phonetic similarity between the mark applied for and the earlier figurative mark as ranging from ‘low to medium’
whereas, in the global assessment of the likelihood
of confusion, it considered the similarity to be ‘so low’ that the likelihood of confusion would be avoided even in the presence of identical services and despite enhanced distinctiveness.
Consequently, the applicant submits that, given the consumer’s imperfect recollection, but also the interdependence of the elements to be compared and therefore the similarity between the figurative marks at issue, to an average degree, since the phrases explaining the acronyms are synonyms, there is a likelihood of confusion between those marks, even for a consumer whose level of attention is high.
159    EUIPO and the intervener dispute the applicant’s arguments.
160    EUIPO submits that paragraphs 40 and 41 of the contested decision are both vitiated by an obvious typographical error, inserted by accident. EUIPO submits that that material error has no effect on the legality of the contested decision. If the redundant expression ‘to medium’, as appears in paragraphs 40 and 41 of the contested decision, is disregarded, it is clear that the Board of Appeal systematically based its assessment on the ‘low degree’ of visual and phonetic similarity between the mark applied for and the earlier figurative mark, which is also apparent from paragraphs 40, 41, 61 and 63 of the contested decision.
161    Similarly, according to EUIPO, the absence of any likelihood of confusion cannot automatically be cancelled out by an enhanced distinctiveness acquired through use, or even by a reputation, as enjoyed by the earlier marks. It points out in that regard that the distinctiveness of the earlier mark is taken into account in assessing the likelihood of confusion as one of the factors involved in that global assessment. According to EUIPO, any enhanced degree of distinctiveness or of reputation necessarily concerns each of the earlier marks taken ‘as a whole’, namely the precise, cumulative and indivisible combination of the elements constituting each of those marks. For example, the applicant was still unable to establish the existence of an exclusive right in the separate elements ‘chartered’, ‘financial’, ‘analyst’ or ‘institute’ taken in isolation. However, the relevant public demonstrating a high level of attention would certainly notice the subtle
nuances distinguishing the individual concepts of a ‘controller’,
‘manager’, ‘analyst’, ‘chartered’, ‘financial’ and ‘institute’ when confronted with those intrinsically weak terms in the marks in question and, therefore, would not confuse them.
162    The intervener submits, in essence, that, given the sufficiently low, even non-existent, level of similarity between the marks at issue and the relevant public’s high level of attention, there is no likelihood of confusion, even if the earlier marks have acquired an enhanced distinctiveness through use.
163    In that regard, it should be recalled that, in the case of opposition proceedings based on an earlier individual mark, the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, must be understood as the risk that the public might believe that the goods or services covered by that mark and those covered by the mark applied for come from the same undertaking or, as the case may be, from economically linked undertakings.
The likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (see judgment of 5 March
2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraphs 63
and 67 and the case-law cited).
164    Those factors include inter alia the degree of similarity between the signs at issue and the goods or services in question and also the strength of the earlier mark’s reputation and its degree of distinctive character, whether inherent or acquired through use (judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 64, and of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 57).
165    Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, as marks with a highly distinctive character, either per se or because of the relevant public’s knowledge of them, enjoy broader protection than marks with a less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of
29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18;
and of 22 June
1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
166    The assessment of the distinctive character of a trade mark is of particular importance in so far as the assessment of the likelihood of confusion is made globally and that it implies some interdependence between the factors taken into account (judgment of 9 July
2003, GIORGIO BEVERLY HILLS, T‑162/01, EU:T:2003:199, paragraphs 30
to 33), with the result that the more distinctive the earlier mark, the greater the risk
of confusion (judgment of 29 September
1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18). Accordingly, a weak distinctive character requires a greater degree of similarity between the signs or between the goods and services concerned in order to find that there is a likelihood of confusion (judgment of 25 September 2018, Chypre v EUIPO – M. J. Dairies (BBQLOUMI), T‑384/17, not published, EU:T:2018:593, paragraph 36).
167    As a preliminary point, it should be noted that the relevant public’s level of attention with regard to the services designated by the marks at issue, in the present case, is high (see paragraph 66 above).
168    In the first place, as regards the global assessment of the likelihood of confusion between the earlier word mark and the mark applied for, account should be taken of the fact that, first, the ‘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’ in Class 41 and covered by the earlier word mark and the ‘advertising’, ‘business management’ and
‘business administration’ services in Class 35 and designated by the mark applied for were found to have a low degree of similarity (see paragraph 78 above). Likewise, second, the ‘education; providing of training’ services in Class 41 and designated by the mark applied for and including ‘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’ in Class 41 and covered by the earlier mark were found
to be identical to those, whereas the ‘association services, namely promoting the interests of financial analysts’
in Class 42 and covered by the earlier word mark were found
to be similar (see paragraph 79 above).
169    Moreover, thirdly, in accordance with the findings made in paragraphs 110, 118 and 120 above, the marks at issue display a low
degree of visual similarity and an average degree of phonetic similarity, whilst being conceptually different.
170    Fourthly, account should also be taken of the enhanced distinctiveness of the earlier word mark (see paragraph 156 above).
171    Having regard to the foregoing and taking account of the case-law cited in paragraph 166 above, it must be held that a likelihood of confusion as to the services found to be identical cannot be excluded with regard to the relevant public, even if it is very attentive, given the enhanced distinctiveness of the earlier word mark and the similarities found between the marks at issue. By contrast, the likelihood of confusion is to be excluded for the services found to be similar or slightly similar.
172    In the second place, as regards the global assessment of the likelihood of confusion between the earlier figurative mark and the mark applied for, it must be held that, first, the
‘association services, namely the promotion of education, professional responsibility, ethics and integrity of financial analysts’ in Class 42 and covered by the earlier mark and the ‘advertising’, ‘business management’ and ‘business administration’ services in Class 35 and designated by the mark applied for were found
to be similar to a low degree (see paragraph 78 above). Likewise, second, the abovementioned services in Class 42 and covered by the earlier figurative mark were found
to be similar to the ‘education; providing of training’ services in Class 41 and designated by the mark applied for (see paragraph 79 above).
173    In addition, thirdly, in accordance with the findings noted in paragraphs 125, 129 and 139 above, the marks at issue have an average degree of visual and phonetic similarity, whilst being conceptually similar to a low degree.
174    Fourthly, the normal distinctiveness of the earlier figurative mark should also be taken into account
(see paragraph 156 above).
175    Furthermore, as regards EUIPO’s argument that there was an obvious typographical error in the contested decision and that it was clear that the Board of Appeal had assessed the similarities between the marks at issue
taking into account a low degree of similarity and not an average degree, it should be noted that, in paragraph 125 above, the Court considered that the marks at issue were similar to an average degree. Therefore, that argument cannot succeed.
176    Having regard to the foregoing and given that the legal principle according to which consumers only rarely have the opportunity to make a direct comparison of the different marks in question but must rely on an imperfect image they have kept in their mind also applies to a public demonstrating a high level of attention (see, to that effect, judgments of 16 December 2010,
Longevity Health Products v OHIM – Gruppo Lepetit (RESVEROL), T‑363/09, not published, EU:T:2010:538, paragraph 33, and of 20 February
2018, Kwang Yang Motor v EUIPO – Schmidt (CK1), T‑45/17, not published, EU:T:2018:85, paragraph 57), it must be held, in the present case, that the figurative marks at issue present a likelihood of confusion for the services found to be similar. By contrast, as regards services found
to have a low degree of similarity,
it must be held that there is no likelihood of confusion, in accordance with Article 8(1)(b) of Regulation No 207/2009.
177    Therefore, it is apparent from the conclusions drawn in paragraphs 171 and 175 above that a likelihood of confusion cannot be excluded in respect of the ‘education; providing of training’ services in Class 41 and designated by the mark applied for, which were found, respectively, to be identical to the ‘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’ in Class 41 and similar to the ‘association services, namely the promotion of education, professional responsibility, ethics and integrity of financial analysts’
in Class 42. By contrast, no likelihood of confusion is found under Article 8(1)(b) of Regulation No 207/2009 with regard to the ‘advertising; business management; business administration’ services in Class 35.
178    Accordingly, the contested decision must be set aside in part, in so far as it discounted any likelihood of confusion with regard to the ‘education;
providing of training’ services in Class 41, designated by the mark applied for.
2.      The second plea in law, alleging an incorrect assessment of the evidence establishing the reputation of the earlier marks
179    As regards the applicant’s second plea in law by which, in essence, it challenges the Board of Appeal’s assessment under Article 8(5) of Regulation No 207/2009, it should be recalled that application of that provision presupposes that several cumulative criteria have been met, while
failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 34 and the case-law cited). In that regard, it is necessary in particular, first, that the earlier mark referred to has a reputation, second, that the marks at issue are identical or similar, third, that there is a risk that the use of the mark without due cause would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trademark, and, fourth, that the mark applied would be used without due cause.
180    In the present case, after examining the evidence of the purported reputation of the earlier marks and the finding that it was insufficient to establish a reputation (see paragraph 151 above), it must be held that, since the requirement of reputation with regard to the two earlier marks is lacking (see paragraph 156 above), pursuant to the case-law cited in paragraph 179 above, there is no need to examine in greater detail the other conditions for the application of Article 8(5) of Regulation No 207/2009.
181    Accordingly, the second plea-in-law must be rejected as unfounded.
D.      The request for alteration of the contested decision
182    By the first head of claim in the main action, the applicant asks the Court to alter the contested decision by, in essence, finding a likelihood of confusion in respect of all the services referred to in paragraph 60 above.
183    In that regard, it is apparent from Article 72(3) of Regulation No 2017/1001 that, as regards actions brought against decisions of the Boards of Appeal, ‘the General Court shall have jurisdiction to annul or to alter the contested decision’.
184    Since the annulment of all or part of the Board of Appeal decision being contested before the Court constitutes a necessary prerequisite in order for the Court to allow an application for alteration of that decision, within the meaning of Article 72(3) of Regulation 2017/1001, such an application may not be granted where there is no claim for annulment of the contested decision (see
Order of 1 February
2018, ExpressVPN v EUIPO (EXPRESSVPN), T‑265/17, EU:T:2018:79, paragraph 15 and the case-law cited).
185    In that regard, if the Court’s power to alter decisions does not have the effect of conferring on it the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position, the exercise of that power must be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take
(judgment of 5 July
2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
186    In the present case, in the context of the main action, the contested decision was annulled with regard to the ‘education; providing of training’ services in Class 41 (see paragraph 177 above), in so far as the likelihood of confusion was excluded with regard to those services.
187    In those circumstances, pursuant to the case-law cited in paragraph 184 above, it is necessary, by altering the contested decision, to hold that there is a likelihood of confusion between the earlier word and figurative marks, and the mark applied for as regards
the ‘education; providing of training’ services designated by the mark applied for and to uphold the opposition and, therefore, to reject the application for registration in so far as those
services are concerned.
188    The action is dismissed as to the remainder.
IV.    Costs
189    Under Article 134(1) and (3) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. However, where
each party succeeds on some and fails on other heads, each party is to bear its own costs.
190    In the context of the main action and the cross-claim, since each party has been unsuccessful in part in its submissions and pleas and since the contested decision has been annulled in part, each party must be ordered to bear its own costs, including those incurred before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Annuls in part the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 9 June 2022 (Case R 1660/2021-2) in so far as it rejected again the opposition as regards the ‘office functions’ services in Class 35 and those of ‘entertainment; sporting and cultural activities’ in Class 41;
2.      Annuls in part and alters the decision of the Second Board of Appeal of EUIPO of 9 June 2022 (Case R 1660/2021-2) in that it upholds the opposition to registration of the figurative mark CCA CHARTERED CONTROLLER ANALYST CERTIFICATE as an EU trade mark as regards the ‘education; providing of training’ services in Class 41 and dismisses the application for registration of that mark as regards those services;
3.      Dismisses the main action and the cross-claim as to the remainder;
4.      Orders each party to bear its own costs, including those incurred before the Board of Appeal.
Costeira
Kancheva
Tichy-Fisslberger
Delivered in open court in Luxembourg on 6 November 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
Table of contents
I.
Background to the dispute
II.
Forms of order sought
A. The forms of order submitted in support of the main action
B. The forms of order submitted in support of the cross-claim
C. The form of order sought in support of the plea of inadmissibility raised in respect of the cross-claim
III.
Law
A.
Admissibility of the cross-claim
B.
The cross-claim and the scope of the dispute between the parties
C.
The main action
1.
The first plea in law, alleging incorrect assessment of the likelihood of confusion.
(a)
The relevant public
(b)
Comparison of the services in question
(c)
Comparison of the marks at issue
(1)
The distinctive and dominant elements of the marks at issue
(2)
Visual, phonetic and conceptual comparison of the marks at issue
(i)
Comparison with the earlier word mark
(ii)
Comparison with the earlier figurative mark
(d)
The distinctiveness and reputation of the earlier marks
(e)
Global assessment of the likelihood of confusion
2.
The second plea in law, alleging an incorrect assessment of the evidence establishing the reputation of the earlier marks
D.
The request for alteration of the contested decision
IV.
Costs
*      Language of the case: English.