JUDGMENT OF THE GENERAL COURT (Second Chamber)
7 June 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark BANQUÌ – Earlier EU figurative mark Bankia – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Distinctive character of the earlier mark)
In Case T‑368/22,
Cassa Centrale Banca – Credito Cooperativo Italiano SpA, established in Trente (Italy), represented by J. Graffer, G. Locurto and A. Ottolini, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann and D. Hanf, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Bankia, SA, established in Madrid (Spain),
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli (Rapporteur), President, J. Schwarcz and R. Norkus, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Cassa Centrale Banca – Credito Cooperativo Italiano SpA, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 April 2022 (Case R 1318/2021-1) (‘the contested decision’).
Background to the dispute
2        On 19 April 2018, the applicant filed with EUIPO an application for registration of an EU trade mark for the word sign BANQUÌ.
3        The mark applied for designated goods and services contained in Classes 9, 35 and 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 9: ‘Databases (electronic); Computer software; USB flash drives [not pre-recorded]; USB flash drives; Smart cards [integrated circuit cards]; Cash cards [encoded]; Printed cash cards [encoded]; Cash cards [magnetic]; Credit cards; Electronic card readers; Laser cards; Smart cards [integrated circuit cards]; Card readers for credit cards; Magnetic coded card readers; Banking cards [encoded or magnetic]; Encoded cards for use in point of sale transactions; Payment cards being magnetically encoded; Encoded cards for use in relation to the electronic transfer of funds; Terminals for electronically processing credit card payments; Apps for smartphones, tablet computers and desktop computers for access to banking services; Computer software for accessing information directories that may be downloaded from the global computer network; Internet servers; Computer servers; Computer database servers’;
–        Class 35: ‘Advertising; Business management; Business analysis; Business analysis of markets; Cost price analysis; Analysis of business information; Economic analysis for business purposes; Advertising agencies; Assistance to industrial enterprises in the conduct of their business; Business administration assistance; Compilation, production and dissemination of advertising matter; Advice in the field of business management and marketing; Business advisory and information services; Marketing services; Arranging of commercial and business contacts; Arranging of trading transactions and commercial contracts; Bidding quotation; Arranging of festivals for advertising purposes; Organisation of trade fairs for commercial or advertising purposes; Efficiency experts; Public relations services; Accountancy, book keeping and auditing; Business advisory and information services; Marketing studies; Business research; Business consultancy and advisory services; Business risk management services; Business strategy and planning services; Business appraisal; News clipping services; Accounting; Economic forecasting; Opinion polling; Drawing up statements of account; Auctioneering services; Business auditing’;
–        Class 36: ‘Financial affairs; Monetary affairs; Banking; Financial advice; Home banking; Evaluation (Financial -) [insurance, banking, real estate]; Insurance agencies; Administration of insurance plans; Administration of insurance plans; Administration of insurance portfolios; Banking insurance; Credit risk insurance; Mortgage insurance; Credit insurance; Consulting and information concerning insurance; Insurance guarantees; Financial services rendered by insurance companies; Real estate procurement for others; Real estate management; Arranging letting of real estate; Investment advisory services relating to real estate; Real estate lending services; Real estate management; Real estate trustee services; Assessment and management of real estate; Issuance of travelers’ checks; Issuing stored value cards; Deposit of valuables; Acquisition and transfer of monetary claims; Administration of savings accounts; Financial management; Administration of pension schemes; Merchant banking services; Brokerage; Arranging the provision of finance; Advisory services relating to financial planning; Tax services [not accounting]; Establishment of trusts (Services for the -); Provision of current accounts; Arranging the provision of finance; Provision of pension schemes; Provision of financial services by means of a global computer network or the internet; Provision of financial securities; Securing of funds; Financial risk management services; Estate trust management; Financial management of current accounts; Financial management relating to banking; Internet banking; Financial investment; Merchant banking services; Online banking; Financial planning and management; Loan and credit, and lease-finance services; Internet banking; Banking and financing services; Telebanking; Bank account services; Deposit accounts services; Savings accounts services; Current account facilities; Financing and funding services; Savings scheme services; Pension services; Monetary services; Pension services; Bank account and savings account services; Financial transfers and transactions, and payment services; Fundraising; Card services; Issuance of credit cards; provision of credit cards and debit cards; Providing of automated teller machines (ATM) and debit cards; Bank card, credit card, debit card and electronic payment card services; Credit card and payment card services; Management of credit card services; Consultancy relating to credit cards, debit cards and charge cards; Opening and closing bank accounts; Accommodation bureaux [apartments]; Estate agency; Financial analysis; Safe deposit services; Credit leasing; Insurance brokerage; Real estate brokerage; Stockbroking; Currency trading and exchange services; Fiscal assessments; Stock exchange quotations; Savings bank services; Real-estate valuations; Electronic funds transfer; Check [cheque] verification’.
4        On 13 September 2018, Bankia SA filed a notice of opposition against registration of the mark applied for in respect of all the goods and services referred to in paragraph 3
above.
5        The opposition was based on, inter alia, the earlier EU figurative mark, reproduced below, covering goods and services contained in
Classes 9, 35 and 36 and corresponding, for each of those classes, to the following description:
–        Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus’;
–        Class 35: ‘Advertising and commercial or industrial management assistance; business administration, office functions; import-export agencies’;
–        Class 36: ‘Real estate administration, housing agents; real estate services; real estate services via telecommunication networks (including mobile telephones), data transmission networks and global computer communications networks’:
6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p.1).
7        On 14 October 2019, the Opposition Division issued a first decision which was annulled by the Board of Appeal, which sent the case back to the Opposition Division. On 28 June 2021, on the basis of Article 8(1)(b) of Regulation 2017/1001, the Opposition Division granted the opposition in part, in so far as the mark applied for referred to goods in Class 9, services in Class 35, except ‘auctioneering services’, and the following services contained in Class 36: ‘Real estate procurement for others; real estate management; arranging letting of real estate; investment advisory services relating to real estate; real estate lending services; real estate management; real estate trustee services; assessment and management of real estate; accommodation bureaux [apartments]; estate agency; real estate brokerage; real-estate valuations’.
8        On 29 July 2021, the applicant filed an appeal at EUIPO against the decision of the Opposition Division in so far as it had upheld the opposition.
9        By the contested decision, the Board of Appeal dismissed the appeal. In essence, the Board of Appeal found that the goods and services at issue were identical, highly similar or similar, and that the signs at issue were visually similar to an average degree and phonetically very similar, whereas the comparison from a conceptual standpoint
remained neutral. In view of the normal inherent distinctive character
in the earlier mark, the Board of Appeal found, by taking into account the Spanish-speaking part of the relevant public, a likelihood of confusion.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision and admit the mark applied for;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
Law
Claim to admit the mark applied for
12      The applicant asks the Court to ‘admit the mark applied for’. Such an application must be viewed as seeking the Court to allow the application for registration of that mark.
13      In that regard, it is true that the Court has jurisdiction under Article 72(3) of Regulation 2017/1001 to alter Board of Appeal decisions. That said, that jurisdiction to alter decisions operates to the effect that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation 2017/1001, which means that the power of the Court to entertain a request for amendment must be assessed in the light of the powers conferred on that Board of Appeal (see, to that effect, judgment of 18 October 2016, Raimund Schmitt Verpachtungsgesellschaft v EUIPO (Brauwelt), T‑56/15, EU:T:2016:618, paragraph 12
and the case-law cited).
14      The Board of Appeal does not have the power to hear an application that it register an EU trade mark. The registration of an EU trade mark is a consequence of a finding that the conditions laid down in Article 51 of Regulation 2017/1001 have been met, although the departments of EUIPO which are responsible for the registration of EU trade marks do not, in that respect, adopt any formal decision which might be the subject of an appeal. It is apparent from the provisions of Articles 51, 160 and 161(1) of Regulation 2017/1001 that the powers conferred on the examiner and the Opposition Division do not relate to finding whether all the conditions for registration of an EU trade mark, provided for in Article 51 of that regulation, are met. In those circumstances, having regard to the provisions of Article 71(1) of Regulation 2017/1001, a Board of Appeal does not have power to decide whether a trade mark should be registered. Therefore, nor is it for the Court to hear an application for alteration of a Board of Appeal to that effect (see, to that effect, order of 30 June 2009, Securvita v OHIM (Natur-Aktien-Index), T‑285/08, EU:T:2009:230, paragraphs 17 to 23, and judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 13 and the case-law cited).
15      It follows that the request for recognition of the mark applied for must be rejected as being brought before a court lacking in jurisdiction to hear it.
Claim for annulment of the contested decision
Admissibility of the evidence submitted for the first time in the action
16      The applicant submitted in Annexes 8 to 11 of the application documents seeking to establish that banks frequently suggested the goods and services such as those covered by the earlier mark.
As the EUIPO notes, those documents were not submitted during the administrative procedure.
17      An action brought before the Court under Article 72(2) of Regulation 2017/1001 seeks to review the legality of decisions of the Boards of Appeal. It follows from that provision that facts not submitted by the parties before the adjudicating bodies of EUIPO cannot be submitted at the stage of the appeal brought before that EU court. The Court is called upon to assess the legality of the decision of the Board of Appeal by reviewing the application of EU law made by that board, particularly in the light of facts which were submitted to the latter, but the Court cannot, by contrast, carry out such a review by taking into account matters of fact newly produced before it (see, to that effect, judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraphs 52 and 54 and the case-law cited).
18      Therefore, it is not the Court’s function to review the facts in the light of documents produced before it for the first time. In addition, adducing that evidence is contrary to Article 188 of the Rules of Procedure of the General Court, according to which the pleadings of the parties may not change the subject matter of the proceedings before the Board of Appeal (see, to that effect, judgment of 5 October 2022, Les Bordes Golf International v EUIPO – Mast-Jägermeister (LES BORDES), T‑696/21, not published, EU:T:2022:602, paragraph 65 and the case-law cited).
19      Therefore, the documents in Annexes 8 to 11 of the application, submitted for the first time before the Court, must be disregarded as being inadmissible (see, to that effect, judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
Substance
20      The applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
21      According to Article 8(1)(b) of Regulation 2017/1001, 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.
22      The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services at issue and taking into account all factors relevant in the present case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
23      In the present case, the applicant invokes errors made by the Board of Appeal in its assessment of the level of attention of the relevant public, the distinctive character of the earlier marks and the comparison of the signs at issue as well as in its global assessment of the likelihood of confusion.
24      By contrast, the applicant does not challenge the findings of the Board of Appeal concerning the comparison of the goods and services covered by the signs at issue, which have been found to be, depending on the case, identical, highly similar or similar. It is not necessary to challenge those findings.
–       The relevant public
25      In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
26      The relevant public for the purpose of assessing the likelihood of confusion is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for.
Thus, as a general rule, when goods or services covered by one of the marks at issue are included in the broader designation covered by the other mark, the relevant public is to be defined by reference to the more specific wording (see judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraphs 38 and 39 as well as case-law cited).
27      In the present case, for reasons of procedural economy, the Board of Appeal concentrated on the Spanish-speaking section of the relevant public. It found that the goods and services at issue were aimed at the general public as well as the professional public and that the level of attention of those publics varied from average to high depending on the price and degree of specialisation of the goods and their frequency of purchase.
The Board of Appeal observes that it had been held that where the relevant public consists
in consumers forming part of the general public and the professional public, the group with the lowest level of attention had to be taken into account.
28      The applicant submits that, in respect of services in Class 36 covered by the earlier mark, the level of attention of the relevant public, including in so far as it consists
in the general public, is high. More generally, the Board of Appeal submits that, as that was, correctly, found in the decision of 14 October 2019 of the Opposition Division, the level of attention of the relevant public concerning the goods and services at issue, is, taking account of their nature, globally superior to the average.
29      EUIPO disputes the applicant’s arguments.
30      First, it should be noted that the case-law which the applicant relies on for the purpose of challenging the level of attention of the general public, found in the contested decision, relates to the financial and insurance services included in Class 36. Those services are not covered by the earlier mark.
31      Second, and in any event, contrary to what the applicant claims, the Opposition Division had, in its decision of 14 October 2019, also concluded that the level of attention of the relevant public varied from average to high.
32      Third, the applicant does not submit any other factor establishing the grounds for which the Board of Appeal erred in finding that a section of the relevant public would display an average degree of attention. In that regard, it is necessary to establish that the findings of the Board of Appeal, in relation to the level of attention of the relevant public, concern both the services and goods at issue. It is true that in relation to the real estate services contained in Class 36, the degree of attention of the relevant public is heightened since those services are not purchased or contracted on a regular basis, that their price is relatively high and that they may have a significant impact on the future financial situation of the consumer (see judgment of 2 March 2022, Banco de Investimento Global v EUIPO – Banco BIC Português (EUROBIC), T‑125/21, not published, EU:T:2022:102, paragraph 67 and the case-law cited). By contrast, as regards
the goods at issue in Class 9, including USB flash drives, magnetic data carriers or apparatus for recording, transmission or reproduction of sound or images, it was held that, as such goods could have a purchase price varying from relatively low to relatively high, as well as a lifespan that could be relatively short or could
span several years, the level of attention of the general public could also vary from average to high (see, to that effect, judgment of 5 December 2017, Xiaomi v EUIPO – Apple (MI PAD), T‑893/16, not published, EU:T:2017:868, paragraph 25).
33      In those circumstances, the applicant is not justified in claiming that the Board of Appeal erred in its assessment that the relevant public for the marks at issue would display a level of attention varying from average to high.
–       The distinctive character of the earlier mark
34      First of all, according to settled case-law, the degree of distinctive character of the earlier mark, which determines the extent of the protection conferred by it, is one of the relevant factors for assessing the likelihood of confusion. The more distinctive the earlier mark, the greater the likelihood of confusion. That being so, the existence of a likelihood of confusion is not precluded where the distinctive character of the earlier mark is weak (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, paragraph 70 and the case-law cited).
35      Next, it should be noted that, in accordance with the case-law, for the purpose of assessing the distinctive character of a mark or an element making up a mark, an examination must be made of the greater or lesser capacity of that mark or element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark or element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgments of 13 June 2006 Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35 and the case-law cited, and of 28 April 2021, Primart v EUIPO – Bolton Cile España (PRIMART Marek Łukasiewicz), T‑584/17 RENV, not published, EU:T:2021:231, paragraph 75 and the case-law cited).
36      Lastly, it must be pointed out that an element of a mark is descriptive and lacking in any distinctive character if at least one of its possible meanings designates a characteristic of the goods or services concerned. That is the case if the link established between the content of the word, on the one hand, and the goods or services in question, on the other, is sufficiently specific and direct to prove that the word enables the goods or services to be immediately identified in the minds of the relevant public (see judgment of 15 December 2016, Intesa Sanpaolo v EUIPO (START UP INITIATIVE), T‑529/15, EU:T:2016:747, paragraph 62 and the case-law cited).
37      In the present case, in the light of the statement of reasons for the Opposition Division’s decision, which forms part of the context in which the contested decision was adopted, since the Board of Appeal confirmed the lower-level decision of EUIPO in its entirety (see, to that effect, judgment of 24 September 2008, HUP Uslugi Polska v OHIM – Manpower (I.T.@MANPOWER), T‑248/05, not published, EU:T:2008:396, paragraph 48 and the case-law cited), it should be noted that, in paragraphs 43 to 47 of the contested decision, the Board of Appeal found, in essence, that the evidence submitted relating to the possible enhanced distinctive character of the earlier mark did not relate to the banking and financial services contained in Class 36 in respect of which the earlier mark was not registered. The Board of Appeal inferred from this that the assessment of distinctive character of the earlier mark had to be based on its inherent distinctive character. It noted that that was normal upon finding that the goods and services covered by that mark did not relate to banking and financial services and that, accordingly, the use of the word ‘bank’ was arbitrary.
38      The applicant submits that the Board of Appeal erred in its assessment by finding that the earlier mark had a normal distinctive character whereas at least part of the goods and services that it covered, in particular those contained in Classes 9 and 36, had a link with the concept of ‘bank’. They are typically related to banking as they are regularly offered by banks. The applicant maintains thus that the distinctive character of the earlier mark is weak.
39      EUIPO disputes the applicant’s arguments on the ground that they are based on, according to EUIPO, the incorrect assumption that the goods and services covered by the earlier mark relate to banking and financial activities. EUIPO clarifies, however, that if the Court were to find that the earlier mark has a weak distinctive character, in particular in so far as it covers certain products in Class 9, the contested decision should be annulled, in whole or in part. It is therefore necessary, according to EUIPO, to assess the claim of the other party in the proceedings before the Board of Appeal in relation to
whether the earlier mark’s distinctive character
was acquired through use.
40      In that regard, it is necessary, at the outset, to note that it is common ground that the word ‘bankia’ does not have a meaning in Spanish, in which language the word ‘bank’ is ‘banco’. However, as the Board of Appeal noted, in essence, the general public could perceive in the earlier mark an allusion to the concept of ‘bank’ or banking services.
41      As for the claimed links between the goods and services covered by the earlier mark and the concept of ‘bank’, first, it should be noted that the line of argument by the applicant does not relate to the services contained in Class 35. In that regard, it should be held that the concept of ‘bank’ or banking services are not descriptive of a characteristic or quality of those services.
42      Next, as regards the services covered by the earlier mark and contained in Class 36, it has already been held that banking services did not have the same nature, the same intended purpose, nor the same method of use as real estate services, and that they were not provided, in principle, on the same premisses (see, to that effect, judgments of 11 July 2013, Metropolis Inmobiliarias y Restauraciones v OHIM – MIP Metro (METRO), T‑197/12, not published, EU:T:2013:375, paragraphs 42 and 43, and of 17 September 2015 Bankia v OHIM – Banco ActivoBank (Portugal) (Bankia)
T‑323/14, not published, EU:T:2015:642, paragraph 35). In those circumstances, even if banking operators regularly offer real estate services, it cannot be maintained that the earlier mark is descriptive of a characteristic of real estate services, falling within Class 36 covered by the earlier mark.
43      Lastly, as regards the goods contained in Class 9 covered by the earlier mark, while it is true that their wording does not refer to banking activities or services, certain categories of goods covered by the earlier mark include goods connected to the banking sector. Such is the case in particular for ‘data processing equipment and computers’ and ‘magnetic data carriers, recording discs’, which were actually and exclusively taken into account by the Board of Appeal in order to make a conclusion as
to the similarity or the identity of the goods at issue. As the Board of Appeal found itself during the comparison of the goods and services covered by the marks at issue, those two categories of goods include the goods such as ‘electronic card readers’, ‘card readers for credit cards’, ‘terminals for electronically processing credit card payments’, ‘cash cards’, ‘credit cards’, ‘banking cards [encoded or magnetic]’, ‘encoded cards for use in relation to the electronic transfer of funds’ and ‘apps for smartphones, tablet computers and desktop computers for access to banking services’ covered by the mark applied for.
Thus, it should be considered that the earlier mark, in so far as it refers to the concept of ‘bank’ or banking services, may designate one of the characteristics of some of the products covered by it.
44      Therefore, the applicant is correct in submitting that the Board of Appeal’s assessment erred in its finding that the earlier mark, as it covered ‘magnetic data carriers, recording discs’ and ‘data processing equipment and computers’ had a distinctive character that was inherently normal,
the latter having to be viewed, on the contrary, as being weak. By contrast, there is no reason to call into question the finding of the Board of Appeal in relation to the inherently normal distinctive character of the earlier mark in so far as it covers other goods in Class 9 and services included in Classes 35 and 36.
–       Comparison of the signs at issue
45      The overall assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the overall assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
46      In the present case, the Board of Appeal found that the signs at issue coincided in their three first letters and in the letter ‘i’ and that the stylisation of the earlier mark was lacking in semantic content and only served to make the word element clear. The Board of Appeal inferred the existence of average visual similarity and, taking into account the identity of the first syllable and the start of the second syllable, strong conceptual similarity. From a conceptual standpoint, the Board of Appeal considered that since neither sign had a clear meaning for the Spanish-speaking part of the relevant public, the conceptual comparison remained neutral, in spite of a reference by both signs to the concept of a bank.
47      The applicant submits that the visual, phonetic and conceptual differences between the signs at issue prevail over their similarities. According to the applicant, in the light of the significance of the visual aspect of the goods and services at issue, the weak distinctive character of the earlier mark and the greater level of attention of the relevant public, the Board of Appeal should have concluded that the signs at issue were different and, therefore, excluded the likelihood of confusion.
48      In the first place, it should be made clear that, although the marketing conditions are a relevant factor in the application of Article 8(1)(b) of Regulation 2017/1001, they are to be taken into account at the stage of the overall assessment of the likelihood of confusion and not at that of the assessment of the similarity of the signs at issue. The assessment of the similarity of the signs at issue, which is only one of the stages in the examination of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, involves comparing the signs at issue in order to determine whether those signs are similar from visual, phonetic
and conceptual standpoints. Although that comparison must be based on the overall impression made by those signs on the relevant public, account must nevertheless be taken of the intrinsic qualities of the signs at issue (see judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraphs 70 and 71 and the case-law cited).
49      It follows that the applicant is not disputing the assessment of the Board of Appeal on the ground that it did not take into account, for the purpose of comparing the signs at issue, the purported
dominance of their visual
aspects over their phonetic aspects account being taken of the conditions for marketing the goods and services concerned.
50      In the second place, in so far as the line of argument of the applicant is based on the allegedly descriptive nature of the elements ‘bank’ and ‘banq’ of the signs at issue regarding the goods and services concerned, it should be borne in mind that a distinction must be made between, on the one hand, the notion of the distinctive character of the earlier mark, which determines the protection afforded to that mark and that must be taken into account in the global assessment of the likelihood of confusion, and, on the other, the notion of the distinctive character which an element of a mark possesses, which is concerned with its ability to dominate the overall impression created by the mark and which must be examined from the stage of assessment of the similarity of the signs, in order to determine the likely dominant elements of the sign (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 43, and judgment of 25 March 2010, Nestlé v OHIM – Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, EU:T:2010:123, paragraph 65).
51      In the present case, it does not appear likely that the average consumer breaks down the elements ‘bankia’ and ‘banquí’ respectively into an element ‘bank’ or ‘banq’ and a suffix ‘ia’ or ‘uí’. As the marks at issue consist in a single short word, comprised of a few letters, no element (such as, for the earlier mark, the font used)
can lead to them being split. Such a distinction renders even less likely that the elements ‘bank’ or ‘banq’ are different from the Spanish word ‘banco’.
52      It appears thus that the public will understand the elements ‘bankia’ and ‘banquí’ as an indivisible whole and not as being made up of two separate units, one having descriptive character and the other distinctive. The assessment of their similarity must thus be based on those elements considered as a whole.
53      In the third place, as regards the visual comparison, the applicant relies on notable visual differences between the signs at issue arising both from the particularly distinctive figurative elements of the earlier mark, and the ending of the mark applied for and the word element of the earlier mark.
54      In that regard, it should be noted that the signs at issue are each made up of six letters and coincide in their three first letters ‘b’, ‘a’ and ‘n’ as well as the letter ‘i’, which has an accent in the mark applied for.
Those signs are differentiated by the presence, in the earlier mark, of the letters ‘k’ and ‘a’ and, in the mark applied for, the letters ‘q’ and ‘u’. It flows from the finding in paragraph 52 above that the applicant is not justified in claiming that the Board of Appeal should have granted a lesser weight, in the analysis of the similarity of the signs, to the coincidence of the first three letters.
55      Furthermore, as the Board of Appeal set out in the contested decision, where a mark consists in word elements and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods and services in question by citing the name of the mark than by describing the figurative element thereof (see judgment of 14 February 2019, Torro Entertainment v EUIPO – Grupo Osborne (TORRO Grande MEAT IN STYLE), T‑63/18, not published, EU:T:2019:89, paragraph 42 and the case-law cited). In the present case, the word element of the earlier mark is written in a font that is lightly stylised, except for the letter ‘k’ which is perceived as sharing its vertical line with the letter ‘n’ which precedes it. That word element is in green, with the first letter only in upper case, and appears on a figurative element in the form of a brown rectangle. Contrary to what the applicant submits, the stylisation of the earlier mark is not such as to attract the attention of consumers by deflecting them from the name of the mark. On the contrary, since in particular the stylisation is lacking in semantic content, it is more likely to show the word element of the mark.
56      As the Board of Appeal noted in the contested decision, the similarity of the signs at issue, due to their common part, is reinforced by the fact that that part forms their initial part. In accordance with the case-law, even in the case of short marks, the consumer normally attaches more importance to the first part of words (see judgment of 6 November 2014, Popp and Zech v OHIM – Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 110 and the case-law cited). While it may be true that that finding cannot apply in all cases, it should be noted that, in light of the elements set out in paragraphs 54 and 55 above, the Board of Appeal did not err in its assessment that an average degree of visual similarity exists between the signs at issue.
57      In the fourth place, as regards the phonetic comparison, the applicant simply submits that the Board of Appeal failed to take into account the different ending of the signs at issue, including the accent on the ‘i’ of the mark applied for that results in a different pronunciation of those signs.
The applicant inferred accordingly that they are phonetically different.
58      It follows from the contested decision that the Board of Appeal took into consideration that the two marks consisted of two syllables, where the first were identical while the second shared the same sound linked to the pronunciation of the letters ‘k’ and ‘q’. In actual fact, as EUIPO notes, in essence, in its reply, the mark applied for is included phonetically
in the earlier mark. As for the presence of the accent over the ‘i’ of the mark applied for, it must be pointed out, like EUIPO, that such an accent does not exist in the Spanish language. However, even if it were to be considered by the Spanish-speaking part of the relevant public as emphasising the final syllable, while the stress is placed on the first syllable of the earlier mark, such a circumstance does not seem sufficient to call into question the finding of the Board of Appeal regarding the greater degree of phonetic similarity of the signs at issue.
59      In the fifth place, from a conceptual standpoint, the Board of Appeal considered that, in spite of a reference to the concept of bank, the signs at issue did not have a clear meaning for the Spanish-speaking part of the relevant public and that, therefore, the conceptual comparison remained neutral.
60      The applicant merely states that, from a conceptual standpoint, it is undisputed that the signs are different, without substantiating that statement with an argument and, in particular, without calling into question the lack of clear meaning of the signs at issue for the Spanish-speaking part of the relevant public, nor the fact that those signs might evoke the concept of a bank. Therefore, for the part of the public that would not perceive such a concept, it is not necessary to call into question the finding by the Board of Appeal that the conceptual comparison of the signs at issue is neutral. In respect of the public perceiving a reference in the signs to banking services, it would result in the signs being similar from a conceptual standpoint also.
61      It follows that the applicant has no basis for calling into question the assessments of the Board of Appeal concerning the comparison of the signs at issue.
–       The likelihood of confusion
62      A global assessment of the likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between these goods or services. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
63      In the present case, the Board of Appeal found that a likelihood of confusion exists on the part of the general public in terms of the identity, the strong similarity or the similarity of the goods and services covered by the marks at issue, the level of similarity of the signs at issue and the inherently normal distinctive character
of the earlier mark.
64      It should be noted that the applicant disputes the analysis of the likelihood of confusion carried out by the Board of Appeal based in particular on the alleged errors of assessment in relation to the level of attention of the relevant public and degree of similarity of the signs at issue, which were disregarded by the Court (see paragraphs 33 and 61 above).
65      In addition, the applicant’s argument alleging the greater relevance of the earlier mark’s visual aspect must be disregarded as ineffective in so far as it covers banking and financial services. That mark does not cover such services. Furthermore, it was found that the Board of Appeal had correctly taken the view as to an average degree of visual similarity existing between the signs at issue (see paragraph 56 above).
66      As regards the inherent distinctive character of the earlier mark, it was correctly considered to be normal by the Board of Appeal, in particular as that mark covers the services contained in Classes 35 and 36 (see paragraph 44 above).
67      In those circumstances, as the mark applied for covers the services contained in Classes 35 and 36, in view of the level of similarity between the signs at issue and the goods and services in question, and the normal distinctive character of the earlier mark with regard to the services contained in the same classes, it must be held that the Board of Appeal was entitled to find that a likelihood of confusion exists, even with regard to the public displaying a greater level of attention.
68      In contrast, in so far as the mark applied for
covers goods contained in Class 9, it was found in paragraph 44 above that the earlier mark in so far as covering the goods contained in that same class, namely ‘magnetic data carriers, recording discs’ and ‘data processing equipment and computers’, which were effectively and exclusively compared to goods covered by the mark applied for, had an intrinsically weak distinctive character.
69      Whilst, according to the case-law considered in paragraph 34 above, the more distinctive the earlier trade mark, the greater will be the likelihood of confusion, the opposite is also true. With regard to a trade mark with a weak distinctive character, and which thus has a lesser capacity to identify the goods or services for which it has been registered as coming from a particular undertaking, the degree of similarity between the signs should be high to justify a likelihood of confusion, or this would risk granting excessive protection to that trade mark and its proprietor (see, to that effect, judgment of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 56).
70      In the present case, the signs at issue are only similar to an average degree from a visual standpoint. The level of similarity from a phonetic standpoint is high
due to the coinciding sound stemming from the elements ‘banki’ and ‘banquì’, which alludes to the concept of ‘bank’ or to banking services which are connected with certain goods covered by the marks at issue, namely goods covered by the earlier mark considered in paragraph 68 above and, at the very least, the goods covered by the mark applied for referred to in paragraph 43 above.
Where the elements of similarity between two signs arise from the fact that, as in the present case, they share a component which has a weak
inherent distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgment of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI), T‑328/17 RENV, not published, EU:T:2021:16, paragraph 64 and the case-law cited).
71      In that regard, EUIPO claims that the recognition of an inherently weak distinctive character
of the earlier mark in so far as it covers certain goods included in Class 9 should lead to excluding that a likelihood of confusion exists in so far as the marks at issue cover the goods included in that class.
72      Therefore, it must be concluded that, having regard to the level of similarity between the signs at issue and the inherently weak distinctive character of the earlier mark in so far as it covers certain goods in Class 9, and notwithstanding the identity or similarity of the goods at issue, the Board of Appeal was incorrect to
find that a likelihood of confusion existed
in so far as the marks at issue covered the goods contained in Class 9.
73      It follows from all of the foregoing that the contested decision should be annulled in so far as the Board of Appeal dismissed the appeal brought by the applicant in that the application for registration of the word mark BANQUÌ as an EU mark covered the goods in Class 9.
Costs
74      Under Article 134(2) of the Rules of Procedure, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared. In the present case, since the applicant and EUIPO have been partially unsuccessful, they must each be ordered to bear their own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 April 2022 (Case R 1318/2021-1) in so far as it rejected the appeal brought by Cassa Centrale Banca – Credito Cooperativo Italiano SpA in that the application for registration of the word mark BANQUÌ as an EU mark designated goods in Class 9 within the meaning 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;
2.      Dismisses the action as to the remainder;
3.      Orders Cassa Centrale Banca – Credito Cooperativo Italiano and EUIPO each to bear their own costs.
Marcoulli
Schwarcz
Norkus
Delivered in open court in Luxembourg on 7 June 2023.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.