JUDGMENT OF THE GENERAL COURT (First Chamber)
30 April 2025 (*)
( EU trade mark – Opposition proceedings – Application for EU figurative mark R+ – Earlier EU word marks AirPlus International, AirPlus Connect and AirPlus CardControl and figurative mark AirPlus INTERNATIONAL – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 – Examination of the facts of EUIPO’s own motion – Article 95(1) of Regulation 2017/1001 – Well-known facts – Refusal of the request for oral proceedings before the Board of Appeal – Article 96(1) of Regulation 2017/1001 )
In Case T‑241/24,
AirPlus International GmbH, formerly Lufthansa AirPlus Servicekarten GmbH, established in Neu-Isenburg (Germany), represented by R. Kunze, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Repsol, SA, established in Madrid (Spain),
THE GENERAL COURT (First Chamber),
composed of R. Mastroianni, President, T. Tóth and S.L. Kalėda (Rapporteur), Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 11 February 2025,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, AirPlus International GmbH, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 February 2024 (Case R 1433/2023-2) (‘the contested decision’).
Background to the dispute
2        On 23 November 2021, the other party to the proceedings before the Board of Appeal, Repsol, SA, filed with EUIPO an application for registration of an EU trade mark in respect of the following figurative sign:
3        The mark applied for covered goods and services 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, corresponding, for each of those classes, to the following description:
–        Class 9: ‘Coded bank cards; Magnetic payment cards; Electronic chip cards; Credit cards; Cash cards [encoded]; Computer software applications, downloadable; Encoded loyalty cards’;
–        Class 35: ‘Publicity services; Sales promotion for others; Loyalty scheme services; Administrative loyalty card services; Promoting the goods and services of others through the distribution of discount cards; Prize draws (Organising of -) for promotional purposes; Business management’;
–        Class 36: ‘Financial and monetary services; Insurance services; Bank card, credit card, debit card and electronic payment card services; Cash card services; Providing rebates at participating establishments of others through use of a membership card; Processing of debit card payments’.
4        On 3 March 2022, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5        The opposition was based on the following earlier rights:
–        the EU figurative mark reproduced below, registered on 24 August 2007 under number 2335057, designating goods and services in Classes 9, 35, 36 and 42:
–        the EU word mark AirPlus International, registered on 26 September 2002 under number 2335693, designating goods and services in Classes 9, 35, 36 and 42;
–        the EU word mark AirPlus Connect, registered on 15 March 2018 under number 17475864, designating goods and services in Classes 9, 35, 36 and 38;
–        the EU word mark AirPlus CardControl, registered on 25 December 2012 under number 11077583, designating goods and services in Classes 9, 35, 36, 37, 38 and 42.
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) 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 11 May 2023, the Opposition Division rejected the opposition.
8        On 10 July 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was no likelihood of confusion, in the light in particular of the important visual dissimilarity between the signs at issue, the low impact of those signs’ conceptual similarity on the likelihood of confusion and the high degree of attention of part of the relevant public.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs incurred in the proceedings before the Court, before the Board of Appeal and before the Opposition Division.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
Law
12      In support of its action, the applicant relies, in essence, on three pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001, second, infringement of Article 94(1) and Article 95(1) of that regulation, of the right to be heard and of the right to a fair trial and, third, infringement of Article 96(1) of Regulation 2017/1001.
13      The Court considers it appropriate to examine the second plea in law first.
The second plea in law, alleging infringement of Article 94(1) and Article 95(1) of Regulation 2017/1001
14      The applicant claims, in essence, that the Board of Appeal infringed Article 94(1) and Article 95(1) of Regulation 2017/1001 by taking the view that financial services are mostly provided after they have been visually presented to consumers, even though that point was not raised by the parties and the applicant did not have the opportunity to submit its comments in that regard. In addition, the Board of Appeal did not furnish any evidence in support of that finding and did not state the reasons for it to the requisite legal standard.
15      EUIPO contests the applicant’s arguments.
16      Under Article 95(1) of Regulation 2017/1001, in proceedings relating to relative grounds for refusal of registration, EUIPO is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, so that the Board of Appeal may base its decision only on the relative grounds for refusal relied on by the party concerned and on the related facts and evidence presented by the parties.
17      Nevertheless, the fact remains that the Board of Appeal is required to decide on all issues which, in the light of the facts, evidence and arguments provided by the parties and the relief sought, are necessary to ensure a correct application of Regulation 2017/1001 and in respect of which it has all the information required in order to be able to take a decision, even if no element of law related to those issues has been relied on by the parties before it (judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 41; also see judgment of 19 October 2022, Greenwich Polo Club v EUIPO – Lifestyle Equities (GREENWICH POLO CLUB), T‑437/21, not published, EU:T:2022:643, paragraph 22 and the case-law cited).
18      Furthermore, the Board of Appeal is entitled, where appropriate, to supplement the factual evidence adduced by the parties for the purposes of its examination of whether there is a likelihood of confusion. Indeed, the restriction of the factual basis of the examination by the Board of Appeal, as referred to in paragraph 17 above and provided for in Article 27(2) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104 p. 1), does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 29).
19      In the context of opposition proceedings based on Article 8(1)(b) of Regulation 2017/1001, the assessment of the similarity of the goods and services in question and of the signs at issue is necessary to ensure the correct application of that regulation, with the result that the adjudicating bodies of EUIPO are required to make those assessments, if necessary of their own motion. As those assessments do not presuppose any matter of fact which is for the parties to establish and do not require the parties to provide facts, arguments or evidence tending to establish the existence of those similarities, EUIPO alone is able to detect and assess the existence thereof having regard to the earlier mark on which the opposition is based (see, to that effect, the judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 43).
20      In the present case, since the applicant argued, before the Board of Appeal, that consumers often communicate with providers of financial services by telephone, the Board of Appeal could, without committing an error of law, examine the perception of the signs at issue by consumers in the light of practices on the market for goods and services in the financial sector, taking into consideration well-known facts, even if such facts were not relied on before it.
21      In that regard, the fact relied on by the Board of Appeal in the contested decision that the financial services and related services in Class 36 are generally used on the basis of a written offer or an offer presented on the internet and that, therefore, the choice of the provider of the services in question is generally made visually, must be regarded as a well-known fact within the meaning of the case-law cited in paragraph 18 above (see, to that effect, judgments of 13 July 2012, Caixa Geral de Depósitos v OHIM – Caixa d’Estalvis i Pensions de Barcelona (‘la Caixa’), T‑255/09, not published, EU:T:2012:383, paragraph 79; of 12 June 2019, EOS Deutscher Inkasso-Dienst v EUIPO – IOS Finance EFC (IOS FINANCE), T‑583/17, not published, EU:T:2019:403, paragraphs 103 and 104; and of 12 July 2023, mBank v EUIPO – European Merchant Bank (EMBANK European Merchant Bank), T‑261/22, not published, EU:T:2023:396, paragraph 138). Accordingly, first, the bodies of EUIPO were not required to establish, in their decisions, the accuracy of such a fact and, second, the applicant was entitled to produce documents before the Court to contest its accuracy (see, to that effect, judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 30 and the case-law cited).
22      Against that background, the applicant cannot criticise the Board of Appeal for failing to provide evidence as to its finding, in paragraph 93 of the contested decision, that the choice of banking and financial services was generally made visually, that is to say, on the basis of a written offer or via the internet. In addition, it must be noted, as observed by EUIPO, that it is for the applicant to prove its claims that the services in question were, to a very large extent, marketed and provided orally.
23      In so far as the applicant’s arguments could be interpreted as alleging a failure to state reasons for the contested decision, it must be held that the Board of Appeal stated, to the requisite legal standard, the reasons for that decision, enabling the applicant to understand the reasons for the dismissal of its action and the Court to review the legality of that decision. Furthermore, since the Board of Appeal was not required to establish, in its decision, the accuracy of the well-known fact relied on, the applicant cannot validly claim that the grounds are inadequate in that regard.
24      The second plea in law must therefore be rejected as unfounded.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
25      In support of its first plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, the applicant contests the Board of Appeal’s finding that, in the context of the global assessment of the likelihood of confusion, the visual differences between the signs at issue meant that it could be concluded that there was no likelihood of confusion, despite the phonetic similarities. According to the applicant, confirmation of the existence of a phonetic similarity of the signs at issue should have been sufficient to reach the conclusion that there is a likelihood of confusion. In addition, the applicant points to the importance of the phonetic aspect of those signs for the services in question, stating that consumers regularly communicate with financial service providers over the phone, for example in connection with telephone banking services.
26      EUIPO contests those arguments.
27      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
28      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 at issue and the 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 32 and the case-law cited).
29      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).
30      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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).
31      In addition, it should be recalled that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. 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 proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
32      Assessment of the similarity between two marks cannot be limited to taking just one component of a composite trade mark and comparing it with another mark. Rather, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
33      As a preliminary point, it should be noted that the Board of Appeal found that the goods and services in question were aimed partly at the general public, partly at business customers with specific professional knowledge or expertise and partly at both the general public and business customers with specific professional knowledge or expertise. It thus endorsed the Cancellation Division’s finding that the level of attention of the relevant public was high in respect of the business-related services in Class 35, the financial services in Class 36 and the payment-related goods in Class 9. Moreover, the Board of Appeal noted that all of the goods and services covered by the mark applied for were identical or similar to the goods and services covered by the earlier marks. The applicant does not dispute the abovementioned findings of the Board of Appeal.
34      Next, in the first place, as regards the distinctive character of the signs at issue, the Board of Appeal found that the earlier marks had a normal degree of distinctiveness. That finding is not disputed by the applicant.
35      As regards the applicant’s argument that the Board of Appeal, when comparing the signs at issue, incorrectly took account of the distinctive character of the mark applied for, it must be noted that that assessment by the Board of Appeal forms part of the latter’s examination of the possible distinctive or dominant character of one or more of the elements making up the mark applied for, for the purpose of determining the overall impression produced by that mark, within the meaning of the case-law referred to in paragraph 31 above. According to the case-law, the examination of the elements making up the signs at issue is a preliminary step which is necessary for and inextricable from the assessment of the similarity of those signs. The Board of Appeal was therefore required, in order to ensure the correct application of Article 8(1)(b) of Regulation 2017/1001, to examine the elements of the mark applied for, even if those elements had not been challenged before the Board of Appeal (see, to that effect, judgment of 13 September 2023, Korres v EUIPO – Naos (EST. KORRES 1996 HYDRA-BIOME), T‑328/22, not published, EU:T:2023:533, paragraph 28).
36      In the second place, as regards the comparison of the signs at issue, it should be noted that the Board of Appeal found that those signs were visually different and that, by contrast, for part of the relevant public, the mark applied for had at least an average degree of phonetic similarity with the word element ‘airplus’ of the earlier marks. In addition, the Board of Appeal noted that the conceptual comparison had no significant influence in the present case. Those findings are not called into question by the applicant, which merely disputes the conclusions to be drawn from them in respect of the global assessment of the likelihood of confusion.
37      In that regard, the applicant disputes the global assessment of the likelihood of confusion, in the context of which the Board of Appeal found that, having regard in particular to the nature of the goods and services in question and the level of attention of the relevant public, the visual differences between the signs at issue outweighed their phonetic similarity.
38      As is apparent from settled case-law, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate to examine the objective conditions under which the marks may be present on the market (judgment of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49; see also judgment of 13 July 2012, ‘la Caixa’, T‑255/09, not published, EU:T:2012:383, paragraph 78 and the case-law cited).
39      In the present case, as regards, first, the level of attention of the relevant public, it is necessary to uphold the Board of Appeal’s finding (paragraphs 29 and 30 of the contested decision), which, moreover, is not disputed by the applicant, that that level is high for the services in question in Classes 35 and 36 and for the payment-related goods in Class 9, whereas that level is average as regards the other goods and services in question. Indeed, as regards, in particular, the financial services in Class 36, it is apparent from the case-law that the level of attention of the specialised public and of the general public for financial services is high, since those services are liable to have a direct impact on the economic and financial assets of consumers, they generally involve substantial sums of money and they may have significant financial consequences (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 66 and the case-law cited).
40      Second, the applicant has not called into question the Board of Appeal’s finding that the purchase of the goods and services in question was generally made on the basis of a written offer or via the internet, with the result that the relevant public would be confronted visually with the signs at issue. In that regard, the applicant merely submits that consumers often communicate with providers of financial services by telephone, for example in connection with telephone banking services, without, however, providing any evidence that supports those claims or that is capable of calling into question the Board of Appeal’s finding, arising from a well-known fact, that the services in question were generally chosen on the basis of a written offer or an offer presented on the internet.
41      The Court previously held that, for financial services in Class 36, the visual aspect of the signs predominated, since the relevant public perceived the signs on written documents and prospectuses, when choosing a financial institution for its services and for the accompanying goods. In such a context, the visual aspect, and thus also the perception of graphic elements, in addition to word elements, is more important than the phonetic aspect (see, to that effect, judgments of 13 July 2012, ‘la Caixa’, T‑255/09, not published, EU:T:2012:383, paragraph 79; of 12 June 2019, IOS FINANCE, T‑583/17, not published, EU:T:2019:403, paragraphs 103 and 104, and of 12 July 2023, EMBANK European Merchant Bank, T‑261/22, not published, EU:T:2023:396, paragraph 138 and the case-law cited).
42      In the light of the foregoing, it must be held that the Board of Appeal did not make an error of assessment in finding that there was no likelihood of confusion in the present case and, therefore, the first plea in law must be rejected.
The third plea in law, alleging infringement of Article 96(1) of Regulation 2017/1001
43      The applicant claims that the Board of Appeal was wrong to refuse its request for an oral hearing, which would have allowed the applicant to address the facts and arguments in the current proceedings in more detail and to counter-argue the assertions made for the first time in the contested decision.
44      EUIPO contests the applicant’s arguments.
45      It is apparent both from the wording of Article 96(1) of Regulation 2017/1001 and from the case-law that the Board of Appeal has discretion as to whether, where a party requests that oral proceedings be organised, they are really necessary (order of 14 March 2011, Ravensburger v OHIM, C‑370/10 P, not published, EU:C:2011:149, paragraph 77, and judgment of 16 July 2014, Langguth Erben v OHIM (Shape of an alcoholic beverage bottle), T‑66/13, not published, EU:T:2014:681, paragraph 88).
46      In the present case, it must be stated that, although the applicant complains that the Board of Appeal did not organise oral proceedings, it does not indicate any circumstance which prevented it from making an effective statement of its position in the written procedure before EUIPO and does not demonstrate how oral proceedings were necessary in the present case.
47      Accordingly, the third plea in law must be rejected as unfounded.
48      Since none of the pleas put forward by the applicant in support of its claims is well founded, the action must be dismissed in its entirety.
Costs
49      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
50      As a hearing took place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders AirPlus International GmbH to pay the costs.
Mastroianni
Tóth
Kalėda
Delivered in open court in Luxembourg on 30 April 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.