JUDGMENT OF THE GENERAL COURT (Second Chamber)
26 September 2017 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark widiba — Earlier national word mark DiBa — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Inadmissibility of the appeal before the Board of Appeal — Request for restitutio in integrum — Duty of care)
In Case T‑84/16,
Banca Monte dei Paschi di Siena SpA, established in Siena (Italy),
Wise Dialog Bank SpA (Banca Widiba SpA), established in Milan (Italy),
represented by L. Trevisan and D. Contini, lawyers,
applicants,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and J. García Murillo, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
ING-DIBa AG, established in Frankfurt am Main (Germany), represented by N. Gerling and M. Wolpert-Witzel, lawyers,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 26 November 2015 (Joined Cases R 113/2015-2 and R 174/2015-2), relating to opposition proceedings between ING-DIBa and Banca Monte dei Paschi di Siena,
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, F. Schalin (Rapporteur) and M.J. Costeira, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 18 February 2016,
having regard to the response of EUIPO lodged at the Court Registry on 28 July 2016,
having regard to the response of the intervener lodged at the Court Registry on 20 July 2016,
having regard to the decision of 30 June 2017 joining Cases T‑83/16 and T‑84/16 for the purposes of the oral part of the procedure,
further to the hearing of 30 June 2017, in which the intervener did not participate,
gives the following
Judgment
Background to the dispute
1        On 3 October 2013, Banca Monte dei Paschi di Siena SpA, whose successor in law is Wise Dialog Bank SpA (Banca Widiba SpA) (hereinafter ‘the applicants’), filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2        Registration as a mark was sought for the following figurative sign:
3        The goods and services in respect of which registration was sought are in Classes 9, 16, 36 and 38 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: ‘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; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; credit cards’;
–        Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; printed materials; pamphlets’;
–        Class 36: ‘Insurance; financial affairs; monetary affairs; real estate affairs’;
–        Class 38: ‘Telecommunications’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 212/2013 of 7 November 2013.
5        On 22 January 2014, the intervener, ING-DIBa AG, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6        The opposition was based on, inter alia, the earlier German word mark DiBa, registered on 10 May 2010 under No 302 009 065 734, designating services in Classes 36, 38 and 42 and corresponding, for each of those classes, to the following description:
–        Class 36: ‘Financial affairs; monetary affairs; real estate affairs; insurance’;
–        Class 38: ‘Telecommunications services for banking; transfer of data and information concerning trade and settlement of foreign exchange, interest, business investment and other money transactions; transfer of data and information via online services and the internet; rental and provision of computer programs for trade and settlement of foreign exchange, interest, business investment and other money transactions’;
–        Class 42: ‘Development of data processing programs’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8        On 21 November 2014, the Opposition Division partially upheld the opposition and refused to register the mark applied for in respect of the following goods and services:
–        Class 9: ‘Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data processing equipment, computers; computer software’;
–        Class 36: ‘Insurance; financial affairs; monetary affairs; real estate affairs’;
–        Class 38: ‘Telecommunications’.
9        On 13 January 2015, the intervener filed a notice of appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 against the Opposition Division’s decision.
10      On 19 January 2015, Banca Monte dei Paschi di Siena also filed a notice of appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 against the Opposition Division’s decision. However, it did not file a written statement setting out the grounds of appeal until 21 May 2015, although it had been informed by EUIPO that late filing might render the appeal inadmissible.
11      By decision of 26 November 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO joined the two sets of appeal proceedings and upheld the intervener’s appeal, extending the list of goods and services referred to in paragraph 8 above in respect of which registration of the mark applied for was refused to include ‘credit cards’ in Class 9. However, Banca Monte dei Paschi di Siena’s request for restitutio in integrum was rejected by the Board of Appeal and, accordingly, its appeal was rejected as inadmissible.
12      Regarding the appeal brought by the intervener, the Board of Appeal first of all took the view that the relevant public consisted of average consumers and professionals or specialists in the financial sector, who displayed a high level of attention, and that, as far as the earlier trade mark was concerned, the relevant public was located in Germany. Next, turning to the comparison of the goods and services covered by the marks at issue, the Board of Appeal held that ‘credit cards’ and ‘financial affairs’ were complementary and should therefore be regarded as similar. Lastly, the Board of Appeal, noting that the parties had not disputed the Opposition Division’s findings relating to the similarity of the signs at issue, confirmed the existence of that similarity, with the result that, in the context of the global assessment of a likelihood of confusion, the Board concluded that there was a likelihood of confusion between those signs.
13      Regarding the appeal brought by Banca Monte dei Paschi di Siena, the Board of Appeal considered that that party had not shown that it had exercised all due care required by the circumstances when filing that appeal, with the result that the request for restitutio in integrum had to be rejected and, consequently, that the appeal itself had to be rejected as inadmissible since it had been brought outside the four-month period referred to in Article 60 of Regulation No 207/2009. The Board of Appeal also noted that Banca Monte dei Paschi di Siena had the possibility, in its observations in response to the intervener’s appeal, of seeking a decision annulling or altering the Opposition Division’s decision. However, it did not do so, as it merely requested confirmation of that decision in so far as it had rejected the opposition in respect of ‘credit cards’. The Opposition Division’s decision therefore became final with regard to the goods and services in Classes 9, 36 and 38 covered by the mark applied for in respect of which the opposition had been upheld.
Forms of order sought
14      The applicants claim that the Court should:
–        annul the contested decision in so far as the Board of Appeal did not grant the request for restitutio in integrum, and refer the case back to the Board of Appeal;
–        in the event of rejection of the request for restitutio in integrum, annul the contested decision in so far as it upheld the partial refusal to register the mark applied for and declare that that mark must be registered for the goods in respect of which registration was refused or, in the alternative, refer the case back to EUIPO in order that it may adopt the consequent measures;
–        in any event, annul the contested decision in so far as it upheld the opposition in respect of ‘credit cards’ and declare that the mark applied for must be registered for those goods or, in the alternative, refer the case back to EUIPO in order that it may adopt the consequent measures;
–        order EUIPO to bear the costs of the present proceedings together with those incurred during the administrative proceedings.
15      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicants to pay the costs.
Law
16      The applicants put forward two pleas in law. The first plea alleges infringement of Articles 60 and 81 of Regulation No 207/2009 and of Rule 49(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended, in that the Board of Appeal rejected the appeal brought before it by Banca Monte dei Paschi di Siena as inadmissible and rejected its request for restitutio in integrum. The second plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009 in that the Board of Appeal both endorsed the findings of the Opposition Division following the intervener’s opposition and extended the list of goods and services in respect of which registration of the mark applied for was refused to include ‘credit cards’.
First plea in law: infringement of Articles 60 and 81 of Regulation No 207/2009 and of Rule 49(1) of Regulation No 2868/95
17      In the first plea in law, the applicants claim that the Board of Appeal erred in rejecting Banca Monte dei Paschi di Siena’s appeal as inadmissible under Rule 49 of Regulation No 2868/95 on the ground that the statement of the grounds of appeal had been filed outside the time limit prescribed by Article 60 of Regulation No 207/2009, although that article does not provide that a late filing of the statement of grounds would constitute a ground for inadmissibility of the appeal itself, as that ground of inadmissibility is introduced by Rule 49 of Regulation No 2868/95, which is a regulation not referred to in Regulation No 207/2009 and even prior thereto.
18      According to the applicants, inadmissibility is a severe penalty in the present case when Banca Monte dei Paschi di Siena had promptly declared its intention to appeal against the contested decision. Non-compliance with the time limits for filing a statement of grounds of appeal cannot, they argue, result in a loss of the right to appeal but only in an extension of the prescribed period for the other party to submit its response to the appeal.
19      The applicants submit that, when rejecting Banca Monte dei Paschi di Siena’s request for restitutio in integrum, the Board of Appeal held, incorrectly, that the late filing of the statement of grounds of appeal, or at least the inability to prove that such filing would have occurred on time, would not be the result of exceptional or unforeseeable circumstances.
20      The person at the firm representing Banca Monte dei Paschi di Siena who was responsible for submitting the statement of grounds of appeal was experienced and trained and had never made such a mistake before. In those circumstances, the failure to comply with internal procedure which resulted in the incorrect transmission of the statement containing the grounds of appeal, although that procedure is subject to checks and monitoring, must be regarded as being due to exceptional and unforeseeable circumstances.
21      The applicants also argue that no lack of due care can be imputed to Banca Monte dei Paschi di Siena, since it did everything in its power to comply with the relevant time limits, in particular by employing the services of a well-organised, renowned and experienced trade mark firm.
22      In those circumstances, they submit, rejection of the request for restitutio in integrum would be tantamount to compelling Banca Monte dei Paschi di Siena to suffer a loss of rights due to a failure in the system set up by its representative for monitoring and checking deadlines.
23      EUIPO and the intervener dispute the applicants’ arguments.
24      Article 60 of Regulation No 207/2009, entitled ‘Time limit and form of appeal’, requires, inter alia, that a person bringing an appeal file a notice of appeal in writing with EUIPO within two months after the date of notification of the decision against which that person wishes to appeal. That article also requires that a written statement setting out the grounds of appeal be filed within four months after the date of notification of that decision.
25      Pursuant to Rule 49(1) of Regulation No 2868/95, under the heading ‘Rejection of the appeal as inadmissible’, the Board of Appeal is required to reject as inadmissible an appeal which does not comply with Article 59 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), now Article 60 of Regulation No 207/2009, unless the deficiencies identified have been remedied before the relevant time limit laid down in Article 60 of Regulation No 207/2009 has expired.
26      Article 81(1) of Regulation No 207/2009, entitled ‘Restitutio in integrum’, provides:
‘The applicant for or proprietor of a Community trade mark or any other party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time limit vis-à-vis the Office shall, upon application, have his rights re-established if the obstacle to compliance has the direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any right or means of redress.’
27      It is thus apparent from Article 81(1) of Regulation No 207/2009 that restitutio in integrum is subject to two requirements, the first being that the party has exercised all due care required by the circumstances, and the second being that the obstacle to the party’s compliance has the direct consequence of causing the loss of any right or means of redress (judgments of 13 May 2009, Aurelia Finance v OHIM (AURELIA), T‑136/08, EU:T:2009:155, paragraph 13, and of 5 April 2017, Renfe-Operadora v EUIPO (AVE), T‑367/15, not published, EU:T:2017:255, paragraph 24).
28      It is also apparent from Article 81(1) of Regulation No 207/2009 that the obligation to exercise due care falls in the first instance on the applicant for or proprietor of an EU trade mark or any other party to proceedings before EUIPO. However, if those persons are represented, the representative is subject to the requirement to exercise due care just as much as those persons. Since that person acts on behalf of and in the name of the applicant for or proprietor of an EU trade mark or any other party to proceedings before EUIPO, its actions must be regarded as being the actions of those persons (see judgment of 5 April 2017, AVE, T‑367/15, not published, EU:T:2017:255, paragraph 25 and the case-law cited).
29      It should also be borne in mind that the words ‘all due care required by the circumstances’ require a system of internal checking and monitoring of time limits to be put in place that generally excludes involuntary non-compliance with time limits. It follows that restitutio in integrum may be granted only in the case of exceptional events, which cannot therefore be predicted from experience (judgments of 13 May 2009, AURELIA, T‑136/08, EU:T:2009:155, paragraph 26, and of 5 April 2017, AVE, T‑367/15, not published, EU:T:2017:255, paragraph 26).
30      In the present case, the Board of Appeal held in the contested decision that the Opposition Division had given its decision on 21 November 2014 and that, following the appeal lodged on 19 January 2015 by Banca Monte dei Paschi di Siena, the latter had not filed the written statement setting out the grounds of that appeal until 21 May 2015, that is to say, nearly seven weeks after expiry of the time limit, which took place on 23 March 2015, with the result that the appeal had to be regarded as inadmissible in accordance with Rule 49(1) of Regulation No 2868/95.
31      The Board of Appeal also took the view that a party could not automatically apply to have its rights re-established merely on the ground that its representative had failed to comply with a deadline and that the circumstances invoked before it by Banca Monte dei Paschi di Siena could not be regarded as abnormal and inevitable for the purposes of Article 81(1) of Regulation No 207/2009, with the result that the request for restitutio in integrum had to be rejected.
32      The findings of fact set out in the contested decision concerning the dates on which the appeal and, later, the statement setting out the grounds of that appeal were filed with the Board of Appeal are not disputed by the applicants. It is therefore common ground that the statement setting out the grounds of the appeal was not filed within the four-month time limit laid down in Article 60 of Regulation No 207/2009.
33      While it is true that Article 60 of Regulation No 207/2009 does not explicitly state the penalty for failure to comply with the four-month time limit, that penalty is that set out in Rule 49(1) of Regulation No 2868/95, namely the inadmissibility of the appeal, and, although the original wording of the latter provision refers to Article 59 of Regulation No 40/94, it must now be regarded as referring to Article 60 of Regulation No 207/2009, which has replaced that provision (see, to that effect, judgment of 5 April 2017, AVE, T‑367/15, not published, EU:T:2017:255, paragraph 30).
34      Furthermore, contrary to the applicants’ assertions, EUIPO did not have the power enabling it to extend the four-month time limit by granting the intervener an extension of the prescribed period for submitting its response to the appeal.
35      According to the case-law, it is apparent from Rule 49 of Regulation No 2868/95 that, in the event of a deficiency linked to non-compliance with the provisions expressly mentioned in Rule 49(1), EUIPO cannot award an additional time limit (see, to that effect, judgment of 19 January 2012, OHIM v Nike International, C‑53/11 P, EU:C:2012:27, paragraphs 50 to 52).
36      In addition, having regard to the wording used in the third sentence of Article 60 of Regulation No 207/2009, and in particular the word ‘must’, there can be no doubt regarding the fact that the filing, within the prescribed period, of the statement setting out the grounds of the appeal constitutes an essential precondition for the appeal’s admissibility and that, if that statement is not filed within the prescribed period, the appeal must be rejected as inadmissible, pursuant to Rule 49 of Regulation No 2868/95 (judgment of 28 April 2010, Claro v OHIM — Telefónica (Claro), T‑225/09, not published, EU:T:2010:169, paragraph 21; see also, to that effect, judgment of 17 September 2003, Classen Holding v OHIM − International Paper (BECKETT EXPRESSION), T‑71/02, EU:T:2003:234, paragraphs 50 to 55).
37      The Board of Appeal therefore did not err in law in rejecting the appeal as inadmissible in the contested decision.
38      Concerning the request for restitutio in integrum submitted to the Board of Appeal by Banca Monte dei Paschi di Siena, the applicants confine themselves to repeating before the Court the argument that a human error was made by one of their representative’s employees who, despite her experience, the training which she had received and the internal organisational measures designed to ensure compliance with time limits, was the cause of the failure to send the statement containing the grounds of the appeal within the prescribed period.
39      It should be noted, as the Board of Appeal did in the contested decision, that the obligation to exercise due care does not specifically relate to the actions of the offending employee but to the obligations of the representative before EUIPO in terms of organisation and checks. The applicants do not contribute anything to the discussion which would permit the conclusion that the Board of Appeal was wrong to refuse to consider that the circumstances invoked were exceptional or unforeseeable, whereas the words ‘all due care required by the circumstances’ in Article 81 of Regulation No 207/2009 require a system of internal checking and monitoring of time limits to be put in place that generally excludes involuntary non-compliance with time limits (see, to that effect, judgment of 13 May 2009, AURELIA, T‑136/08, EU:T:2009:155, paragraph 26).
40      In addition, the contested decision points out in its paragraph 35, without being contradicted by the applicants, that, prior to the expiry of the time limit in question, the Registry of the Boards of Appeal twice reminded Banca Monte dei Paschi di Siena’s representative that it was required to file a written statement setting out the grounds of the appeal, but that no follow-up action was taken by that representative.
41      Furthermore, in the light of the principles recalled in paragraph 28 above, the applicants’ argument that they are not directly responsible for the failure to comply with the time limit in question, as that failure was caused by a lapse on the part of their representative, must also be rejected.
42      In those circumstances, the Board of Appeal did not err in taking the view that it was not appropriate to grant the request for restitutio in integrum, given that one of the conditions mentioned in Article 81(1) of Regulation No 207/2009 had not been met, namely the condition requiring the party to have exercised all due care required by the circumstances. The first plea in law must therefore be rejected.
Second plea in law: infringement of Article 8(1)(b) of Regulation No 207/2009
43      In the second plea in law, the applicants claim that, in the event that the line of argument relating to the request for restitutio in integrum were to be rejected, the Court would nonetheless be permitted to assess the legality of the entirety of the contested decision. The Court, they submit, therefore has jurisdiction to examine the appeal in so far as it challenges the Board of Appeal’s endorsement of the Opposition Division’s findings with regard to the existence of a likelihood of confusion between the marks at issue for some of the goods and services covered by the mark applied for. That jurisdiction arises, inter alia, from the fact that, first, the late filing with the Board of Appeal of a written statement setting out the grounds of appeal merely leads to the rejection of the appeal, without rendering the Opposition Division’s decision final, and, second, the Court, when hearing an appeal against a decision made by a Board of Appeal of EUIPO, retains full discretion under Article 65 of Regulation No 207/2009.
44      With regard to the substance, the applicants submit that the decision refusing to register the mark applied for in respect of certain goods and services infringes Article 8(1) of Regulation No 207/2009, given that there is no likelihood of confusion.
45      They argue that, contrary to EUIPO’s findings, first, with the exception of computer software, there is no similarity between the goods and services in Class 9 covered by the mark applied for and the services in Class 38 covered by the earlier mark; secondly, the earlier mark does not have an average distinctive character, but rather a weak distinctive character, because it is descriptive of the services which it denotes, being an acronym of the German expression ‘direkt Bank’ which denotes a bank operating on the market without branches; thirdly, concerning the visual, phonetic and conceptual comparisons, the letter sequence ‘d’, ‘i’, ‘b’ and ‘a’ shared by the signs at issue cannot dispel the different overall impression produced by the signs as a result of their more striking visual, phonetic and conceptual differences, which stem from the addition of the first two letters ‘w’ and ‘i’ as regards the contested sign; and, fourthly, concerning the global assessment of the likelihood of confusion, taking into account the differences between the signs at issue, the weak distinctive character of the earlier mark and the relevant public’s high level of attention as noted by the Board of Appeal, it must be held that there is no likelihood of confusion.
46      The conclusion that there is no likelihood of confusion with the earlier mark must, the applicants submit, apply even more in relation to the other earlier rights invoked by the intervener which were not examined in detail by the Board of Appeal.
47      Lastly, the applicants contend that the contested decision incorrectly extended the opposition to include the ‘credit cards’ covered by the mark applied for, finding that they were similar to the ‘financial affairs’ covered by the earlier mark, whereas the technological aspects and physical manufacture of such cards are the responsibility of specialist manufacturers — a fact of which clients are aware — and that the financial and accounting management of the use of such cards is also carried out by separate specialist operators, with the result that the goods and services in question belong to entirely different market sectors. In addition, that assessment is consistent with EUIPO’s Guidelines for Examination of European Union Trade Marks and that body’s decision-making practice. The Board of Appeal, they submit, ought therefore to have concluded that there was no likelihood of confusion, given that, in particular, the signs at issue are not similar and the relevant public displays a high level of attention.
48      EUIPO and the intervener dispute the applicants’ arguments.
Scope of the review carried out by the General Court
49      The purpose of actions before the Court under Article 65(2) of Regulation No 207/2009 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 76 thereof requires that that review be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
50      Moreover, Article 188 of the Rules of Procedure of the General Court provides that the pleadings of the parties in proceedings before the Court may not change the subject matter of the proceedings before the Board of Appeal.
51      It must be pointed out, first, that the applicants’ argument that there is no likelihood of confusion between the marks at issue so far as the goods and services, other than ‘credit cards’, covered by the mark applied for are concerned has been raised for the first time before the Court and, second, that neither the Opposition Division nor the Board of Appeal assessed the likelihood of confusion on the basis of that line of argument.
52      The applicants’ argument, which seeks to change the subject matter of the dispute, must therefore be declared inadmissible pursuant to Article 65(2) of Regulation No 207/2009, read in conjunction with Article 188 of the Rules of Procedure (see, to that effect, judgment of 19 May 2015, Granette & Starorežná Distilleries v OHIM — Bacardi (42 VODKA JEMNÁ VODKA VYRÁBĚNÁ JEDINEČNOU TECHNOLOGIÍ 42% vol.), T‑607/13, not published, EU:T:2015:292, paragraph 114).
53      Consequently, the review to be carried out by the Court is to be limited to examining the likelihood of confusion between the marks at issue in that the Board of Appeal extended the list of goods and services in respect of which there was a likelihood of confusion to include the ‘credit cards’ covered by the mark applied for and upheld the opposition in respect of those goods.
Substance
54      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because of its identity with, or similarity to, an 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.
55      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
56      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
–       The relevant public
57      According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods 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).
58      In the present case, the assessment carried out by the Board of Appeal in paragraphs 64 to 69 of the contested decision, which, moreover, is not disputed by the parties, appears to be well founded. It must therefore be upheld. Since, so far as the relevant goods and services are concerned, it is necessary to take particular account of the ‘financial affairs’ covered by the earlier mark, on the one hand, and of the ‘credit cards’ covered by the mark applied for, on the other, the relevant public appears to consist in part of average consumers and in part of specialist or professional consumers in the financial sector, this being a public which demonstrates a high level of attention. The territory to be taken into consideration is that of Germany, given that the earlier mark is a German trade mark.
–       Comparison of the goods and services
59      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, 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 goods 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).
60      Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited). In certain circumstances, however, goods and services may be found to be similar because they are complementary (see, to that effect, judgment of 27 October 2005, Éditions Albert René v OHIM — Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraph 66).
61      In the present case, in paragraphs 70 to 101 of the contested decision the Board of Appeal, invalidating the Opposition Division’s analysis, held that the ‘credit cards’ covered by the mark applied for and the ‘financial affairs’ covered by the earlier mark had to be regarded as complementary and, accordingly, similar.
62      The Board of Appeal’s analysis, which must be upheld, is based on a threefold finding, namely (i) that the only intended purpose of ‘credit cards’ is their use in the course of ‘financial services’, which may be likened to ‘financial affairs’ for the purposes of the analysis; (ii) that the usual origin of ‘credit cards’ and ‘financial affairs’ must be considered in the light of their perception by the relevant consumer in the present case; and (iii) that ‘credit cards’ are produced with the sole objective of being used in the course of a ‘financial service’.
63      First of all, regarding the intended purpose of ‘credit cards’, as the Board of Appeal correctly notes in paragraph 100 of the contested decision, account must be taken of the fact that the sole reason ‘credit cards’ exist is in order that they may be used in the course of ‘financial services’. If they were not used in this way, ‘credit cards’ would have no use and would serve no purpose. In this respect, it appears that credit cards have a dual nature and that, although they most often take the form of a plastic rectangle which constitutes their tangible support, they also correspond to a set of contractual relationships between, among others, an issuer or a supplier of financial services, who manages accounts and, as the case may be, grants credit, and clients, who use those cards to make payments or establish credit.
64      Next, regarding the usual origin of ‘credit cards’, while it is true that they are generally manufactured by specialist undertakings, whose name may even appear on those cards, and that other undertakings are also involved in the service chain (from the installation of payment terminals to the implementation of compensation mechanisms), the fact nonetheless remains that their issuers are financial institutions and that, as the Board of Appeal correctly notes in paragraph 91 of the contested decision, the public will not usually consider who has actually produced a credit card, but rather by whom it is issued, and will believe that the responsibility for ensuring that ‘credit cards’ function correctly is assumed by the financial institutions which issue them.
65      Lastly, regarding the production of ‘credit cards’, the sole objective of such production is their use in the course of ‘financial services’, with the result that it is of little importance whether they are manufactured by entities that are distinct from the financial institutions which issue them. Such goods, which are therefore developed in order to market certain specific services, would be meaningless in the absence of those services (see, by analogy, judgment of 19 November 2015, Matratzen Concord v OHIM — Barranco Rodriguez and Barranco Schnitzler (Matratzen Concord), T‑526/14, not published, EU:T:2015:869, paragraph 33).
66      Accordingly, it appears that ‘credit cards’ are closely connected with ‘financial services’ and, hence, with ‘financial affairs’, with the result that those goods and services are complementary for the purposes of the case-law referred to in paragraph 60 above.
67      It is necessary to reject the applicants’ argument that the Board of Appeal, when analysing the similarity of the goods and services in question, departed from both its own instructions, as set out in the EUIPO Guidelines, and its previous decision-making practice.
68      First, the EUIPO Guidelines are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48), and, second, with regard to EUIPO’s previous decision-making practice, it is apparent from settled case-law that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are required to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice of the Boards of Appeal (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 71).
69      It thus follows from all of the foregoing that, given that they are complementary, there is a certain degree of similarity between the goods and services in question, and that, consequently, the finding made in paragraph 101 of the contested decision concluding that there is such similarity must be upheld.
–       Comparison of the signs
70      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by those signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that 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).
71      In paragraph 105 of the contested decision, the Board of Appeal held that the parties did not dispute the Opposition Division’s findings relating to the similarity of the signs at issue and that it was appropriate to endorse those findings, together with those concerning the distinctive and dominant elements of those signs and the distinctiveness of the earlier mark.
72      In the present case, as follows from the findings set out above regarding the inadmissibility of the appeal brought before the Board of Appeal by Banca Monte dei Paschi di Siena, the latter did not dispute the Opposition Division’s decision inasmuch as it had held that the signs at issue were similar. It is also established that Banca Monte dei Paschi di Siena, following the appeal brought by the opponent, did not bring an incidental appeal before the Board of Appeal, but confined itself to requesting confirmation of the Opposition Division’s decision in so far as it had initially rejected the opposition in respect of ‘credit cards’.
73      In those circumstances, the Opposition Division’s findings, in so far as they appear to be well founded and, moreover, have not been disputed by the parties, must be upheld.
74      Therefore, it must be held, as the Opposition Division did, that the signs at issue in particular coincide visually, owing to the presence of the four-letter sequence ‘d’, ‘i’, ‘b’, and ‘a’ in the earlier mark and in the word element constituting the mark applied for, and phonetically, as their pronunciation coincides due to the syllables ‘di’ and ‘ba’, reproduced identically in both signs, and differs only due to the syllable ‘wi’ of the mark applied for, with the result that the signs appear to be similar.
75      Likewise, it must also be held that neither of the signs at issue contains any particularly distinctive or dominant elements and that, inasmuch as it had not been established that the earlier mark was particularly distinctive as a result of use or reputation, it had to be regarded as being of average distinctiveness.
–       The likelihood of confusion
76      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
77      The Board of Appeal took the view that, in view of the similarity of the signs at issue, the average inherent distinctiveness of the earlier mark and the similarity between ‘credit cards’ and ‘financial affairs’, and notwithstanding the high level of attention of the relevant public, it was possible that, when faced with the applicants’ ‘credit cards’ bearing the mark widiba, that public would be misled into believing that those cards have been issued in the context of the ‘financial affairs’ covered by the earlier mark and that they come from the same undertaking or even from economically-linked financial institutions or undertakings.
78      In those circumstances, and also taking into account the average distinctiveness of the earlier mark, the Board of Appeal concluded in paragraph 112 of the contested decision that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
79      Those findings of the Board of Appeal, in so far as they appear to be well founded, must be upheld.
80      In particular, the similarity between the ‘credit cards’ covered by the mark applied for and the ‘financial affairs’ covered by the earlier mark, coupled with the similarity of the signs at issue, entails a strong likelihood that the relevant public will establish a connection between them and will be led to believe that they have a common commercial origin or even that they have been issued by financial institutions which, at the very least, operate within a common social area.
81      The fact that there is no evidence permitting the conclusion that the earlier mark does not have average distinctiveness, even if the relevant public has a high level of attention, supports that assessment, because — as the Board of Appeal correctly noted — that public only rarely has the chance to make a direct comparison between the different marks, but must place its trust in its imperfect recollection thereof (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
82      Given that there is a likelihood of confusion, the Board of Appeal acted correctly in law in taking the view that the opposition was also well founded with regard to ‘credit cards’, without it being necessary to take into consideration the other rights initially invoked before the Opposition Division by the intervener apart from the earlier mark.
83      The second plea in law must therefore be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
84      Under Article 134(1) 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.
85      Since the applicants have been unsuccessful, they must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Banca Monte dei Paschi di Siena SpA and Wise Dialog Bank SpA (Banca Widiba SpA) to pay the costs.
Prek
Schalin
Costeira
Delivered in open court in Luxembourg on 26 September 2017.
E. Coulon
I. Pelikánová
Registrar
President
* Language of the case: English.