ORDER OF THE GENERAL COURT (Eighth Chamber)
4 November 2024 (*)
( EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark FINASTRA – Earlier Benelux word mark FENESTRAE – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law )
In Case T‑346/23,
Finastra International Ltd, established in London (United Kingdom), represented by S. Malynicz, Barrister,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Fenestrae BV, established in The Hague (Netherlands), represented by S. Hoogcarspel and J. van den Berg, lawyers,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov (Rapporteur), President, D. Petrlík and K. Kecsmár, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, Finastra International Ltd, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 April 2023 (Case
R 1296/2022‑1) (‘the contested decision’).
Background to the dispute
2        On 4 December 2017, the applicant designated the European Union in its international registration No 1 405 804, for the word sign FINASTRA. That registration was notified to EUIPO on 7 June 2018, pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
3        The goods and services in respect of which protection was sought are in Classes 9, 35, 36, 38 and 42 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.
4        On 10 October 2018, the intervener, Fenestrae BV, filed a notice of opposition to registration of the mark applied for in respect of all the goods and services designated by it.
5        The opposition was based
on, inter alia, the Benelux word mark FENESTRAE, registered under No 901 225 (‘the earlier mark’), designating goods and services in Classes 9, 38 and 42 and corresponding, for each of those classes, to the following description:
–        Class 9: ‘Computer programs for the digitizing and exchange of information; Computer software for the transmission, receipt, storage, conversion and analysis of information; computer software for the preparation and delivery of textual and graphic information; data processing equipment for digitizing and exchanging information; telecommunications equipment, including mobile portable and fixed devices for receiving and storing data’;
–        Class 38: ‘Telecommunication services for the transmission, reception, retrieval, configuration, translation, conversion and compilation of data and information via wireless connections and computer networks; electronic mail and messaging services; electronic transmission for the purpose of receiving and delivering messages and documents’;
–        Class 42: ‘Design and development of computer software for the digitization and exchange of documents; programming for electronic data processing; technical advice and providing technical information in the field of software for digital data management’.
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.
7        On 19 May 2022, the Opposition Division upheld the opposition for all the goods and services in Classes 9, 38 and 42, designated by the mark applied for, on the basis of Article 8(1)(b) of Regulation 2017/1001, and rejected the opposition as to the remainder, namely for the services in Classes 35 and 36, designated by the mark applied for.
8        On 19 July 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division and requested that it be annulled in part. In the statement setting out the grounds of appeal, the applicant attached Annex D, in which it listed the goods and services subject to the appeal, from which it was apparent that the appeal related solely to part of the goods and services in Classes 9, 38 and 42 covered by the mark applied for, namely those corresponding, for each of those classes, to the following description:
–        Class 9: ‘Computer software, computer programmes and manuals (downloadable) in electronic format for use in relation to banking, trading, stock broking, investment, treasury and/or finance; computer software in the field of banking and financial risk management, the management of financial transactions and evaluating the prices of financial products; computer software for creating searchable databases of information and data relating to banking, trading, stock broking, investment, treasury and/or finance; computer software to enable database management and the development and hosting of Internet Websites for use in the field of finance and trading; computer software to act as an Internet based platform for the sharing of information and to allow the modification thereof and for the creation of interoperability capabilities to enable the connection of banking information systems; communications and networking apparatus and instruments for use in relation to banking, trading, stock broking, investment, treasure and/or finance; parts and fittings for the aforesaid goods’;
–        Class 38: ‘Electronic bulletin board services (telecommunication services) in relation to banking, trading, stock broking, investment, treasure and/or finance; transmission of messages and images (computer aided) in relation to banking, trading, stock broking, investment, treasure and/or finance; information, advice and consultancy services relating to all the aforesaid’;
–        Class 42: ‘Design and development of computer software; design and development of computer systems; design and development of data processing programs and systems; computer programming; computer systems and software analysis and consultancy; computer and technical consultancy; installation, maintenance and support of computer software and systems; computer software project management services; information distribution and management services; creating, maintaining and hosting web sites; hosting software and databases for others; providing an online website featuring and providing temporary use of non-downloadable computer software and software applications; software as a service (SaaS) services, including the provision of online software; online data storage; electronic data storage; hosting of software as a service (SaaS); platform as a service (PaaS) services; providing virtual computer systems and virtual computer environments through cloud computing; online provision of web‑based software; rental, design, creation and updating of computer software and computer databases; computer consultancy services; provision of information relating to computer software and computer systems via a helpline; information, consultancy and advice in relation to the foregoing services; the provision of the foregoing services and information relating thereto on-line, from a computer database or via any other communications; electronic data storage; all of the aforesaid in relation to the field of banking, trading, stock broking, accounting, investment, treasury and/or finance’.
9        By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs, including those incurred in the proceedings before the Board of Appeal.
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.
12      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      Under
Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
14      In the present case, the Court considers that it has sufficient information from the material in the file and decides, pursuant to that article, to rule without taking any further steps in the proceedings, notwithstanding that one of the parties has requested a hearing (order of 6 October 2015, GEA Group v OHIM (engineering for a better world), T‑545/14, EU:T:2015:789, paragraph 13).
15      The applicant relies, in essence, on a single plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, which is divided into three parts, alleging, first, ‘wrong interpretation’ of the goods and services at issue; second, incorrect definition of the relevant public; and, third, failure to apply the rule of conceptual counteraction.
16      In accordance with Article 196(1) of Regulation 2017/1001, international registration designating the European Union is to be subject to opposition in the same way as published EU trade mark applications.
17      Under
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.
18      According to settled case-law, the risk that the public may believe that the goods or services at issue come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
19      It is in the light of those considerations that the Court will examine, first of all, the first part of the single plea, then the third part of that plea and, last, its second part.
The first part, alleging ‘wrong interpretation’ in relation to the goods and services at issue
20      As a preliminary point, it should be noted, as is apparent from paragraph 8 above and as EUIPO maintains, that the appeal which the applicant brought before the Board of Appeal related to only part of the goods and services in Classes 9, 38 and 42 covered by the mark applied for. As is apparent from paragraph 9 of the contested decision, in its statement of the grounds of appeal, the applicant produced Annex D, in which it listed the goods and services subject to its appeal.
21      However, in its application, the applicant also puts forward arguments relating to goods and services which are not included in those referred to in paragraph 8 above.
22      When questioned on that point in the context of a measure of organisation of procedure, the applicant stated that the present action relates only to the goods and services referred to in paragraph 8 above, clarifying that in its application the reference to other goods and services had been made in error.
23      In those circumstances, it should be stated that the present action relates only to the goods and services set out in paragraph 8 above and that there is therefore no need to examine the applicant’s arguments in its application relating to other goods and services.
24      That said, it should be observed that the Board of Appeal, in essence, in paragraphs 38 and 39 of the contested decision, confirmed the reasoning and the finding of the Opposition Division, to which it referred and according to which the goods and services at issue covered by the mark applied for are identical with, or similar to, those covered by the earlier mark.
25      The applicant disputes the finding of the Board of Appeal in respect of each of the classes referred to above.
The comparison of the Class 9 goods at issue
26      In the contested decision, the Board of Appeal upheld the Opposition Division’s finding that, first of all, the ‘computer software, computer programmes and manuals (downloadable) in electronic format for use in relation to banking, trading, stock broking, investment, treasury and/or finance; computer software in the field of banking and financial risk management, the management of financial transactions and evaluating the prices of financial products; computer software for creating searchable databases of information and data relating to banking, trading, stock broking, investment, treasury and/or finance; computer software to enable database management and the development and hosting of Internet Websites for use in the field of finance and trading; computer software to act as an Internet based platform for the sharing of information and to allow the modification thereof and for the creation of interoperability capabilities to enable the connection of banking information systems’ covered by the mark applied for were contained in the ‘data processing equipment for digitizing and exchanging information’ covered by the earlier mark or overlapped with them and were therefore identical.
27      As regards, next, the ‘communications and networking apparatus and instruments for use in relation to banking, trading, stock broking, investment, treasure and/or finance’ covered by the mark applied for, the Board of Appeal, upholding the Opposition Division’s finding, took the view that those goods were identical with the ‘data processing equipment for digitizing and exchanging information’ covered by the earlier mark, in so far as the former were contained in or overlapped with the latter.
28      Last, as regards the ‘parts and fittings for the aforesaid goods’, the Board of Appeal, upholding the Opposition Division’s finding, found that they were at least similar to the ‘data processing equipment for digitizing and exchanging information; computer programs for the digitizing and exchange of information’ covered by the earlier mark in so far as they coincided in terms of their manufacturers, distribution channels and consumers.
29      The applicant claims, in essence, that the Board of Appeal made a ‘wrong interpretation’ of the goods covered by the marks at issue by failing to take sufficient account of their field of use and of their specific functions. In its submission, having regard to the frequency with which applicants for EU marks include software in their applications for registration, there is a need for a principled approach and for caution when interpreting the lists of goods and services that include software and associated services. Thus, where a list of goods and services designates software, it should be interpreted narrowly, using all the information concerning the specific function and field of that software that is available to EUIPO. In the present case, all the Class 9 goods claimed by the mark applied for are different from the Class 9 goods covered by the earlier mark, in so far as each of those goods belongs to different fields of use, namely the banking and financial sector in the case of the mark applied for, and has various specific functions.
30      EUIPO and the intervener dispute the applicant’s arguments.
31      In assessing the similarity of the goods at issue, all the relevant factors relating to those goods should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
32      As regards, in particular, the software and the computer programs, the Court has already had occasion to observe that software consists of programs which control the operation of a machine, especially a computer, and enable it to perform a desired sequence of operations. It follows that a program must be understood in relation to the operations which it carries out and therefore in relation to its function. Thus, the consumer will be guided primarily by the specific function of the product rather than by its nature (see, to that effect, judgment of 30 June 2021, Zoom v EUIPO – Facetec (ZOOM), T‑204/20, not published, EU:T:2021:391, paragraph 51).
33      Thus, in order effectively to assess the degree of similarity between the programs and software claimed by the marks at issue, the function criterion, and therefore the criterion of intended use, assumes overriding importance among the relevant factors to be taken into account (see, to that effect, judgment of 30 June 2021, ZOOM, T‑204/20, not published, EU:T:2021:391, paragraph 53).
34      In the present case, it should be noted that the Class 9 goods covered by the mark applied for to which the present action relates are, in essence, software, computer programs, manuals (downloadable) in electronic format, communications and networking apparatus and instruments for use in the field of banking, trading, stock broking, investment, treasure and finance, and parts and fittings for the aforesaid goods.
35      As for the Class 9 goods covered by the earlier mark, they are, as is apparent from paragraph 5 above, computer programs for the digitising and exchange of information; computer software for the transmission, receipt, storage, conversion and analysis of information; computer software for the preparation and delivery of textual and graphic information; data processing equipment for digitising and exchanging information; telecommunications equipment, including mobile portable and fixed devices for receiving and storing data.
36      In that regard, it should be observed, first, that the functions of all the Class 9 goods claimed by the mark applied for overlap with those of the Class 9 goods covered by the earlier mark. As EUIPO contends, the functions of the computer software claimed by the mark applied for, in so far as they are identified in their descriptions, namely computer software ‘for creating searchable databases of information and data’, ‘to enable database management and the development and hosting of Internet Websites’, ‘to act as an Internet based platform for the sharing of information and to allow the modification thereof and for the creation of interoperability capabilities to enable the connection of banking information systems’ or ‘communications and networking’ apparatus and instruments overlap with the functions of the Class 9 goods of the earlier mark, namely ‘data processing equipment for digitizing and exchanging information’, the ‘transmission, receipt, storage, conversion and analysis of information’ or the ‘preparation and delivery of textual and graphic information’. It follows that the functions of that software, those computer programs and that equipment, as regards both the mark applied for and the earlier mark, coincide to a large extent or resemble each other, so that it seems impossible to distinguish them clearly from each other.
37      Second, it is indeed true that the computer software, computer programs, electronic manuals, communications and networking apparatus and instruments claimed by the mark applied for are characterised by their field of application, namely the banking and financial sector. However, as EUIPO claims and as the Board of Appeal observed, in essence, in paragraph 39 of the contested decision, the Class 9 goods covered by the earlier mark, the use of which is not limited to a specific economic sector, can clearly also be used in the banking and financial sector, like the goods in that class covered by the mark applied for, with the result that the categories of goods covered by the earlier mark encompass those claimed by the mark applied for.
38      The present case is thus distinguished from the case that gave rise to the judgment of 30 June 2021, ZOOM (T‑204/20, not published, EU:T:2021:391), in which the Court noted that each of the descriptions of the ‘computer programs’ and ‘software’ in Class 9, claimed by the marks at issue, referred to specific and distinct intended purposes, namely, on the one hand, ‘downloadable computer programs, being intended for use in connection with musical instruments and sound recording apparatus’ and, on the other, ‘security software that allows users to secure and access their mobile devices through multi-dimensional facial recognition identification’. It was by taking their particular and distinct functions into account that the Court concluded that those goods had only a low degree of similarity (see, to that effect, judgment of 30 June 2021, ZOOM, T‑204/20, not published, EU:T:2021:391, paragraphs 54 to 62).
39      That is not the position in the present case, however, in so far as, on the one hand, the descriptions of the Class 9 goods at issue refer to functions which overlap and, on the other, the goods covered by the earlier mark may be used in any economic sector, including in the banking and financial sector covered by the goods at issue designated by the mark applied for.
40      In those circumstances, the arguments put forward by the applicant relating to the comparison of the Class 9 goods at issue must be rejected as manifestly unfounded.
The comparison of the Class 38 services at issue
41      In the contested decision, the Board of Appeal upheld the Opposition Division’s finding that all the Class 38 services claimed by the mark applied for were contained in the ‘telecommunication services for the transmission, reception, retrieval, configuration, translation, conversion and compilation of data and information via wireless connections and computer networks; electronic mail and messaging services’ covered by the earlier mark or overlapped with them and that, accordingly, the abovementioned services were identical.
42      The applicant submits, in essence, that the services claimed by the mark applied for are different from those covered by the earlier mark because the former services are intended to be used solely in the banking and financial sectors. However, that argument must be rejected for the same reasons as those set out in paragraphs 36 to 39 above.
43      For the remainder, the applicant maintains, first, that the ‘electronic bulletin board services (telecommunication services) in relation to banking, trading, stock broking, investment, treasure and/or finance’ covered by the mark applied for have no ‘obvious similarity’ with the services covered by the earlier mark in the same class, while acknowledging that those services are ‘a form of telecommunications service’. However, it is obvious (i) that the earlier mark covers telecommunications services and (ii) that, according to the actual description of the Class 38 services claimed by the mark applied for, ‘electronic bulletin board services’ are presented as a sub-category of ‘telecommunications services’. In those circumstances, the applicant’s argument can only be rejected.
44      Second, as regards the ‘transmission of messages and images (computer aided) in relation to banking, trading, stock broking, investment, treasure and/or finance’ covered by the mark applied for, the applicant maintains that they are not identical with the services covered by the earlier mark, in so far as the former services are intended to be used solely in the banking and financial sectors.
45      However, it must be stated that the services claimed by the mark applied for, referred to in paragraph 44 above, are a sub-category of the ‘telecommunication services for the transmission, reception, retrieval, configuration, translation, conversion and compilation of data and information via wireless connections and computer networks’ covered by the earlier mark. Therefore, the applicant’s argument concerning those services must be rejected on the same grounds as those set out in paragraphs 36 to 39 above.
46      Third, as regards the ‘information, advice and consultancy services relating to all the aforesaid’ covered by the mark applied for, the applicant merely asserts that the assessment of the similarity of those services to those covered by the earlier mark must be carried out ‘according to the … outcomes for each service specified’. That argument thus has no autonomous content, with the result that it must be rejected on the ground that the arguments on which it is based have been rejected.
47      Consequently, the applicant’s arguments relating to the comparison of the Class 38 services at issue must be rejected as manifestly unfounded.
The comparison of the Class 42 services at issue
48      In the contested decision, the Board of Appeal upheld the Opposition Division’s analysis, according to which the Class 42 services at issue were either identical or similar.
49      In particular, first, the services ‘design and development of computer software; design and development of computer systems; design and development of data processing programs and systems’ in Class 42 covered by the mark applied for were considered to be identical with the services ‘design and development of computer software for the digitization and exchange of documents’ in that class covered by the earlier mark, on the ground that they overlapped or that the former were contained in the latter.
50      Second, the service ‘computer programming’ in Class 42 covered by the mark applied for was considered to be included in the service ‘programming for electronic data processing’ covered by the earlier mark and therefore to be identical with it.
51      Third, EUIPO took the view that the ‘computer systems and software analysis and consultancy; computer consultancy services; provision of information relating to computer software and computer systems via a helpline; information, consultancy and advice in relation to the foregoing services; the provision of the foregoing services and information relating thereto on-line, from a computer database or via any other communications’ covered by the mark applied for overlapped with or were contained in the services ‘technical advice and providing technical information in the field of software for digital data management’ covered by the earlier mark and that they were therefore identical.
52      Fourth, the ‘software as a service (SaaS) services, including the provision of online software; online data storage’ covered by the mark applied for were considered to be at least similar to the service ‘design and development of computer software for the digitization and exchange of documents’ covered by the earlier mark, in so far as the services covered by the mark applied for and the earlier mark coincided in terms of their suppliers, consumers and distribution channels.
53      Fifth, the services ‘installation, maintenance and support of computer software and systems; computer software project management services; rental, design, creation and updating of computer software and computer databases’ of the mark applied for were also considered to be at least similar to the service ‘design and development of computer software for the digitization and exchange of documents’ of the earlier mark, in so far as the services of the mark applied for and of the earlier mark generally originated from the same undertakings, targeted the same consumers and were available through the same distribution channels.
54      Sixth, the services ‘creating, maintaining and hosting websites; hosting software and databases for others; hosting of software as a service (SaaS); platform as a service (PaaS) services; providing virtual computer systems and virtual computer environments through cloud computing; online provision of web-based software’ covered by the mark applied for were considered to be similar to the service ‘programming for electronic data processing’ covered by the earlier mark, in so far as they coincided in their distribution channels and in their consumers and suppliers.
55      In the first place, the applicant claims, in essence, that all the Class 42 services covered by the mark applied for are expressly limited to use in the banking and financial sector, as shown by the specification at the end of the list of those services, which states ‘all of the aforesaid in relation to the field of banking, trading, stock broking, accounting, investment, treasury and/or finance’.
56      However, that argument must be rejected for the reasons set out in paragraph 37 above, since the Class 42 services covered by the earlier mark, the use of which is not limited to a specific economic sector, are clearly also capable of being used in the banking and financial sector, like the services in the same class covered by the mark applied for.
57      In the second place, as regards the services ‘design and development of computer software; design and development of computer systems; design and development of data processing programs and systems; computer programming; computer systems and software analysis and consultancy’ covered by the mark applied for, the applicant puts forward, in essence, two arguments.
58      First, it maintains that its services are different from those covered by the earlier mark, in so far as their use is limited by the specification recalled in paragraph 55 above. That argument must be rejected for the reason set out in paragraph 56 above.
59      Second, it maintains that the functions of the services covered by the earlier mark are different from the functions of the services mentioned in paragraph 57 above covered by the mark applied for, since the former are ‘expressly limited to the [digitisation] and exchange of documents and programming for data processing’.
60      It should be observed, however, that the functions of the services claimed by the mark applied for, set out in paragraph 57 above, overlap with those of the services covered by the earlier mark, as the Board of Appeal rightly found. The services ‘design and development of computer software for the digitization and exchange of documents’ covered by the earlier mark are included in the broader category of the services ‘design and development of computer software; design and development of computer systems; design and development of data processing programs and systems; computer programming’ covered by the mark applied for. Likewise, the services ‘technical advice and providing technical information in the field of software for digital data management’ of the earlier mark are included in the broader category of ‘computer systems and software analysis and consultancy’ covered by the mark applied for.
61      It should be borne in mind that, where the services covered by the earlier mark include the services covered by the trade mark application, those services are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34). The same applies where the services designated by the earlier mark are included in a more general category designated by the mark applied for (see, to that effect, judgments of 23 October 2002, Institut für Lernsysteme v OHIM – Educational Services (ELS), T‑388/00, EU:T:2002:260, paragraph 53, and of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited).
62      Accordingly, the applicant’s argument relating to the services referred to in paragraph 57 above must be rejected.
63      In the third place, the applicant states that it does not dispute the Board of Appeal’s findings that the services ‘computer and technical consultancy; information distribution and management services; providing an online website featuring and providing temporary use of non-downloadable computer software and software applications’ overlap with or are contained in the services ‘technical advice and providing technical information in the field of software for digital data management’ of the earlier mark.
64      In the fourth place, as regards the services ‘installation, maintenance and support of computer software and systems’ of the mark applied for, the applicant submits that those services are provided to a specialist public, that they are not the ‘same type’ and do not have the same purpose as the services covered by the earlier mark, and that their use is limited to the banking and financial sector.
65      In that regard, first, it should be stated that the Board of Appeal took account of the fact that the Class 42 services at issue were intended for a specialist public, in so far as they concerned software design. It observed, moreover, that the other services in that class were intended for both the specialist public and the general public. The applicant does not establish or even claim that the relevant public for the services at issue covered by the mark applied for is different from that for the analogous services covered by the earlier mark.
66      Second, it must be stated that the service ‘installation, maintenance and support of computer software and systems’ covered by the mark applied for comes within the field of information technology, just like the service ‘design and development of computer software for the digitization and exchange of documents’. In addition, the applicant does not dispute the assertion of the Opposition Division, upheld by the Board of Appeal, that the abovementioned services generally originated from the same undertakings and were available through the same distribution channels.
67      As for the fact that the use of the abovementioned services is limited to the banking and financial sector, it is mentioned in paragraph 56 above.
68      Accordingly, the applicant fails to show that the services ‘installation, maintenance and support of computer software and systems’ covered by the mark applied for are different from the Class 42 services covered by the earlier mark.
69      In the fifth place, as regards the ‘computer software project management services’ covered by the mark applied for, the applicant merely asserts that they are provided to undertakings rather than individuals and that, consequently, they have no similarity with the Class 42 services covered by the earlier mark.
70      However, that argument must be rejected for the reason set out in paragraph 65 above.
71      In the sixth place, the applicant claims that the services ‘creating, maintaining and hosting web sites; hosting software and databases for others; software as a service (SaaS) services, including the provision of online software;
hosting of software as a service (SaaS); platform as a service (PaaS) services’ covered by the mark applied for have no similarity with the services covered by the earlier mark because the use of the former services is limited to the banking and financial sector and the services are provided to undertakings. As those arguments have already been rejected in paragraphs 56 and 65 above, reference should be made to those paragraphs. For the remainder, the applicant puts forward no specific argument to call into question the analysis of the Opposition Division, upheld by the Board of Appeal, that the services covered by the mark applied for are similar to the services ‘programming for electronic data processing’ covered by the earlier mark, in so far as they coincided, inter alia, in their distribution channels and their suppliers. In those circumstances, the applicant does not show that the services at issue are different.
72      In the seventh place, as regards the services ‘online data storage’ and ‘electronic data storage’ covered by the mark applied for, the applicant acknowledges that there is a ‘vague similarity’ with the services ‘technical advice and providing technical information in the field of software for digital data management’ covered by the earlier mark. It further submits, however, that if the abovementioned services covered by the mark applied for are considered to relate to the ‘actual service of storing data’, while the abovementioned services covered by the earlier mark relate to ‘advice on the software that deals with data management’, there is no proof of the existence of similarity.
73      However, that argument is based on an incorrect reading of the contested decision. Upholding the analysis of the Opposition Division, the Board of Appeal found that the ‘electronic data storage’ covered by the mark applied for was similar to the ‘design and development of computer software for the digitization and exchange of documents’ covered by the earlier mark and not to the services ‘technical advice and providing technical information in the field of software for digital data management’ covered by that mark, as the applicant claims. Its argument can therefore only be rejected.
74      In the eighth place, as regards the services ‘providing virtual computer systems and virtual computer environments through cloud computing; online provision of web-based software; rental, design, creation and updating of computer software and computer databases’ covered by the mark applied for, in Class 42, the applicant merely asserts that they do not share ‘any common characteristics’ with the Class 42 services covered by the earlier mark, without developing any specific argument in support of that assertion.
75      Such an unsubstantiated argument is incapable of calling into question the Board of Appeal’s finding that the services referred to in paragraph 74 above are similar to the services of the earlier mark in the same class.
76      In the ninth and last place, as regards the ‘computer consultancy services; provision of information relating to computer software and computer systems via a helpline; information, consultancy and advice in relation to the foregoing services; the provision of the foregoing services and information relating thereto on-line, from a computer database or via any other communications’ covered by the mark applied for, the applicant acknowledges that the services covered by the earlier mark ‘fall within’ those referred covered by the mark applied for. In its submission, however, the relevant public is the specialist public rather than the general public.
77      Those services, because some fall within others, as the applicant acknowledges, are, in accordance with the case-law referred to in paragraph 61 above, identical. For the remainder, reference is made to paragraph 65 above.
78      Having regard to the foregoing, the first part of the single plea must be rejected as manifestly unfounded.
The third part, alleging failure to apply the ‘rule of conceptual counteraction’
79      In paragraphs 43 and 44 of the contested decision, the Board of Appeal found that the marks at issue were visually and aurally similar, in essence, to a high degree, which the applicant does not dispute.
80      In paragraph 45 of the contested decision, the Board of Appeal found that a conceptual comparison of the marks at issue was not possible, since neither the mark applied for nor the earlier mark had any meaning for the relevant public, namely the Benelux public.
81      The applicant claims that, for the specialist public, namely that of the ‘FinTech’ and banking sectors, the mark applied for would convey ‘the meaning of being FinTech-related or finance-related’, owing to the use of the term ‘fin’, coupled with ‘astra’, which in several EU languages connotes ‘star’ or is related to ‘stellar phenomena’, so that there is a ‘degree of conceptual counteraction’.
82      EUIPO and the intervener dispute the applicant’s arguments.
83      In that regard, it should be recalled that, according to settled case-law, the conceptual differences between two signs at issue may counteract their visual and phonetic similarities, provided that at least one of those signs has a clear and specific meaning for the relevant public, with the result that that public is capable of grasping it immediately (see judgment of 5 October 2017, Wolf Oil v EUIPO, C‑437/16 P, not published, EU:C:2017:737, paragraph 43 and the case-law cited).
84      In the present case, first, it is not disputed that the earlier mark does not have a clear and specific meaning that will be immediately understood by the relevant public and, second, there is no reason to consider that the relevant public will break the mark applied for down into two parts, ‘fin’ and ‘astra’, or that, even if it were to do so, that mark would have a clear and specific meaning that will be immediately understood by the relevant public.
85      Accordingly, it must be concluded that the Board of Appeal was correct to find that neither of the marks at issue had any meaning for the relevant public and that a conceptual comparison between them was therefore impossible, and, consequently, the third part of the single plea must be rejected as manifestly unfounded.
The second part, alleging incorrect definition of the relevant public
86      The applicant maintains that most of the goods and services covered by the marks at issue are targeted, contrary to the Board of Appeal’s finding, at a specialist public, with a level of attention that ‘made confusion unlikely’.
87      The Board of Appeal found, in paragraph 52 of the contested decision, that, taking into account the identity and similarity between the goods and services at issue, the high degree of visual and aural similarity and the normal inherent distinctiveness of the earlier mark, there existed a likelihood of confusion on the part of the Benelux public, within the meaning of Article 8(1)(b) of Regulation 2017/1001, even taking into account a high level of attention of the relevant public.
88      Thus, first, the Board of Appeal concluded that there was a likelihood of confusion even taking into account a specialist public with a high level of attention, as is the case for part of the Class 42
services, as is apparent from paragraph 52 of the contested decision.
89      Second, even on the assumption that most of the other goods and services at issue are targeted solely at such a specialist public with a high level of attention, as the applicant claims, that circumstance is incapable on its own of calling into question the finding of the Board of Appeal that there exists a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, in so far as the other factors taken into account in the global assessment of that likelihood of confusion –
which either are not contested by the applicant, or are contested but on grounds that are unfounded for the reasons set out in the present order – are of such a kind as to reveal on their own the existence of a likelihood of confusion. Thus, taking into account the identity or the similarity between the goods and services at issue, the high visual and aural similarity between the marks at issue, and the normal inherent distinctiveness of the earlier mark, the Board of Appeal was right to conclude that there existed a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, whatever the relevant public and its level of attention.
90      The second
part of the single plea must therefore be rejected as ineffective.
91      In the light of all the foregoing considerations, the single plea must be rejected as, in part, ineffective and, in part, manifestly unfounded and, accordingly, the action must be dismissed in its entirety as manifestly lacking any foundation in law.
Costs
92      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.
93      As the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the intervener.
94      As EUIPO has applied for costs to be paid by the applicant only in the event that a hearing is scheduled, the applicant should not be ordered to pay the costs incurred by EUIPO.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Finastra International Ltd, in addition to bearing its own costs, shall pay those incurred by Fenestrae BV.
3.      The European Union Intellectual Property Office (EUIPO) shall bear its own costs.
Luxembourg, 4 November 2024.
V. Di Bucci
A. Kornezov
Registrar
President
*      Language of the case: English.