JUDGMENT OF THE GENERAL COURT (Second Chamber)
4 May 2022 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark FIS – Earlier EU word mark IFIS – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑237/21,
Fidelity National Information Services, Inc., established in Jacksonville, Florida (United States), represented by P. Wilhelm, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Banca IFIS SpA,
established in Mestre (Italy),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 26 February 2021 (Case R 1460/2020-1), relating to opposition proceedings between Banca IFIS and Fidelity National Information Services,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, F. Schalin and I. Nõmm (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 4 May 2021,
having regard to the response lodged at the Court Registry on 3 August 2021,
further to the hearing on 24 January 2022,
gives the following
Judgment
Background to the dispute
1        On 5 September 2014, the applicant, Fidelity National Information Services, Inc., 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
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, inter alia, Classes 9 and 36 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 9: ‘Computer software used in financial transaction processing and verification, payment processing, funds transfer, billings, collections, credit card, debit card, and prepaid card processing, and financial risk management all for banks, credit unions, savings institutions, lenders, and other financial institutions and financial-services businesses; computer software used in the operation and management of banks, credit unions, savings institutions, lenders, and other financial institutions and financial-services businesses, and in the rendering of banking and financial services’;
–        Class 36: ‘Financial transaction processing and verification, payment processing, funds transfer, collections, credit card, debit card, and prepaid card processing, and fraud and risk management services all for banks, credit unions, savings institutions, lenders, and other financial institutions and financial-services businesses’.
4        The trade mark application was published in Community Trade Marks Bulletin No 223/2014 of 26 November 2014.
5        On 25 February 2015, Banca IFIS SpA filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of, inter alia, the goods referred to in paragraph 3 above.
6        The opposition was based on, inter alia, the EU word mark IFIS, registered under No 3559127 for services in Class 36 and corresponding to the following description: ‘Financial affairs; monetary affairs; financial advice; financial information; financial sponsorship’.
7        By decision of 21 May 2020, the Opposition Division rejected the opposition in its entirety on the ground that, in its view, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 16 July 2020, the opponent filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
9        By decision of 26 February 2021 (‘the contested decision’), the First Board of Appeal of EUIPO partially annulled the decision of the Opposition Division. It found that there was a likelihood of confusion between the marks at issue, in accordance with Article 8(1)(b) of Regulation No 207/2009, as regards the goods and services in question listed in paragraph 3 above. First of all, it found that the goods and services regarded as being identical and similar were directed at the public at large and at business customers with specific professional knowledge or expertise. It stated that the level of attention of that public could vary from average to high, depending on the price, specialised nature or terms and conditions of the goods and services purchased. It explained that a higher level of attention would be given to goods which were not purchased frequently or to services likely to have financial consequences for consumers. Next, it took the view that there was an average degree of similarity between the goods in Class 9 and the services in Class 36 covered by the mark applied for, on the one hand, and the services in Class 36 covered by the earlier mark, on the other. In addition, it found that the signs had at least an average degree of visual and phonetic similarity. Lastly, it concluded that, in the light of all of those criteria, and taking into account the relevant factors and their mutual interdependence in the multifactorial assessment, the differences between the signs were insufficient safely to rule out a likelihood of confusion.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
12      Given the date on which the application for registration at issue was filed, namely 5 September 2014, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
13      Consequently, in the present case, as regards the substantive rules, the references made, by the Board of Appeal in the contested decision and by the applicant in the arguments raised, to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to the identical provisions of Article 8(1)(b) of Regulation No 207/2009.
14      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It relies, in essence, on four complaints, alleging (i) an error in the determination of the average consumer of the goods and services in question, (ii) an error of assessment in the comparison of the goods and services covered by the marks at issue, (iii) an error of assessment in the phonetic and visual comparison of the signs at issue, and (iv) the cumulative effect of the errors made and a failure to take into account the peaceful coexistence of the signs.
The complaint alleging an error in the determination of the relevant public
15      By its first complaint, the applicant submits that the Board of Appeal erred in the determination of the relevant public. It claims that the goods and services in question are intended for specialist professionals and that, as these are well-informed and experienced consumers, their level of attention is much higher than that given to the purchase of everyday goods. It also takes the view that, in any event, the level of attention of the relevant public is high in respect of all the goods and services in question, namely those covered both by the earlier mark and by the mark applied for, given their nature.
16      EUIPO disputes those arguments.
17      In paragraphs 51 to 53 of the contested decision, the Board of Appeal found that the goods and services covered by the marks at issue were directed at the public at large and at business customers with specific professional knowledge or expertise. It stated that the level of attention of the relevant public could vary from average to high, depending on the price, specialised nature or terms and conditions of the goods and services purchased, and explained that a higher level of attention would be paid to goods which were not purchased frequently or to services in Class 36 likely to have financial consequences for consumers.
18      The Board of Appeal also noted, in paragraph 71 of the contested decision, that the Opposition Division had stated that it was particularly relevant to emphasise the relatively high level of attention of the relevant professional public. It observed, in paragraph 74 of that decision, that even consumers who paid a high degree of attention needed to rely on their imperfect recollection of trade marks.
19      According to settled case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited). The relevant public for the purposes of the assessment of the likelihood of confusion is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (judgment of 28 May 2020, Martínez Albainox v EUIPO – Taser International (TASER), T‑341/19, not published, EU:T:2020:233, paragraph 24).
20      It must be pointed out that the goods in Class 9 and the services in Class 36 covered by the mark applied for are intended solely for ‘banks, credit unions, savings institutions, lenders, and other financial institutions and financial-services businesses’, that is to say, a professional public with a high level of attention. As regards the services in Class 36 covered by the earlier mark, they are worded in more general terms, do not target a particular public and are intended for both the public at large and a professional public.
21      The public likely to use both the services covered by the earlier mark and the goods or services covered by the mark applied for is therefore solely the public composed of specialised professionals referred to in paragraph 20 above.
22      It follows that, in paragraph 52 of the contested decision, the Board of Appeal erred in finding that, ‘in the present case’, the goods and services found to be identical and similar were directed at the public at large. The public at large cannot in fact be taken into account for the purposes of assessing the likelihood of confusion.
23      However, as stated in paragraphs 17 and 18 above, the Board of Appeal also found that the goods and services covered by the marks at issue were directed at a professional public and took into account the high level of attention of that public when assessing the likelihood of confusion.
24      In particular, in paragraphs 71 to 74 of the contested decision, the Board of Appeal clearly included, in its assessment, the Opposition Division’s finding that it was ‘particularly relevant to emphasise the relatively high degree of attention of the relevant professional public’. Next, it observed, in essence, referring to the case-law, that a high level of attention on the part of the relevant public did not preclude the likelihood of confusion in the event that the signs at issue consisted of three and four letters, respectively, and that they merely differed in their first letter. Lastly, it concluded that, in view of the circumstances of the case, there was a likelihood of confusion between the signs at issue. In that regard, it relied on the judgment of 21 November 2013, Equinix (Germany) v OHIM – Acotel (ancotel.) (T‑443/12, not published, EU:T:2013:605), relating to a case in which the relevant public consisted specifically of professionals with a higher level of attention.
25      Thus, the assessment of the likelihood of confusion was also carried out by reference to a public of professionals demonstrating a high level of attention, with the result that the examination carried out by the Board of Appeal of the relevant public and its level of attention is not vitiated by any defect.
26      It must be noted in this regard that the present case differs from that which gave rise to the judgment of 21 December 2021, EFFAS v EUIPO – CFA Institute (CEFA Certified European Financial Analyst) (T‑369/20, not published, EU:T:2021:921, paragraphs 36 to 40), to which EUIPO referred at the hearing. The Court had annulled the decision being contested on the ground that the Board of Appeal had erred in finding that some of the goods and services in question were directed at the public at large whose level of attention was average – whereas they were directed at a professional public whose level of attention was higher than normal – and that the analysis of the likelihood of confusion, which took into account only the average level of attention of the public at large, was therefore flawed. In the present case, as has been stated in paragraph 23 above, the error established in paragraph 22 above is covered by the fact that, as regards the goods and services in question, the Board of Appeal also took into account the high level of attention of the professional public in order to assess the likelihood of confusion.
27      In that context, the applicant submits, in essence, that the public targeted by the services covered by the earlier mark is different from that targeted by the goods and services covered by the mark applied for. It relies on the fact that the opponent did not submit any evidence to show that it provides its services to ‘banks, credit unions, savings institutions, lenders, and other financial institutions and financial-services businesses’.
28      Such an argument cannot succeed. First of all, the assessment of the likelihood of confusion must be made by taking into account, on the one hand, all the goods and services covered by the mark applied for and, on the other, all the goods and services for which the earlier mark has been registered (see, to that effect, judgment of 22 April 2008, Casa Editorial el Tiempo v OHIM – Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, not published, EU:T:2008:121, paragraphs 26 and 27).
29      Next, it should be noted that only the description of the goods and services in respect of which registration of the mark was sought is relevant; the intended or actual use of that mark cannot be taken into account, since the registration does not contain a restriction to that effect. It follows that the specific use which the proprietor of the earlier mark has made of its sign is not capable of changing the goods or services taken into account for the purposes of the assessments underlying the finding of the existence of a likelihood of confusion, such as the definition of the relevant public and its level of attention or the similarity between those goods or services on the part of that public (see, to that effect, order of 30 June 2010, Royal Appliance International v OHIM, C‑448/09 P, not published, EU:C:2010:384, paragraphs 71 and 72, and judgment of 27 January 2021, Turk Hava Yollari v EUIPO – Sky (skylife), T‑382/19, not published, EU:T:2021:45, paragraph 36).
30      Lastly, the comparison of the services and the goods must relate to those covered by the registration of the trade marks at issue and not to those for which the earlier trade mark has in fact been used unless, following an application made under Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), it is apparent that the earlier mark has been used in relation to part only of the goods or services for which it was registered (see, to that effect, order of 30 June 2010, Royal Appliance International v OHIM, C‑448/09 P, not published, EU:C:2010:384, paragraph 74).
31      It is apparent from paragraphs 25 and 26 of the contested decision that the applicant had withdrawn its request for proof of genuine use and that those findings of the Board of Appeal are not disputed by the applicant. It follows that the applicant’s argument that the opponent did not submit any evidence showing that it provided its services to the professionals referred to in paragraph 21 above must also be rejected as ineffective.
32      Accordingly, the first complaint, alleging an error in the determination of the relevant public, must be rejected.
The complaints alleging errors in the comparison of the goods and services
33      The applicant submits that errors were made in the comparison of the goods and services. In the first place, it takes the view that the goods in Class 9 covered by the mark applied for and the services in Class 36 covered by the earlier mark are not complementary. It also observes that the purchaser of software is not the same as the purchaser who takes purchasing decisions in financial or monetary affairs and that the consumer of financial services never seeks to enquire as to who developed the software used by a bank. It states that the real question of law is whether responsibility for the production or provision of those goods and services is thought to lie with the same undertaking and that that is not the case here.
34      In the second place, it submits that the Board of Appeal erred in finding that the services in Class 36 covered by the earlier mark and those in the same class covered by the mark applied for were identical, on the alleged ground that the two groups of services fall within the general category of ‘finance’. It claims that the services covered by the earlier mark target ordinary consumers, whereas the services covered by the mark applied for target only banks, credit unions and other financial institutions. It submits that there is no similarity or complementarity between those services covered respectively by the mark applied for and by the earlier mark.
35      EUIPO disputes the applicant’s arguments.
36      In the first place, as regards the comparison of the goods in Class 9 and the services in Class 36, the Board of Appeal, in paragraphs 32 and 33 of the contested decision, found that the software concerned was developed for various financial institutions and that it had clearly to dovetail closely with the services covered by the earlier mark, given that those services were usually provided by means of a special software application. It took the view that the software in question enabled financial institutions to provide their services. It inferred from this that the abovementioned goods and services were thus highly interlinked due to their complementary nature, that they targeted the same consumers in terms of various financial institutions, that they concerned the financial sector and that they had the same overall purpose. It stated, moreover, that it was a well-known fact that most financial services nowadays were completely dependent on computers and software. Finally, it concluded that those goods and services were similar to an average degree.
37      The Board of Appeal’s reasoning must be upheld. First, the examination of the first complaint has made it possible to establish that the goods in Class 9 and the services in Class 36 were targeted, inter alia, at the same consumers, namely banks, credit unions, savings institutions, lenders and other financial institutions and financial-services businesses.
38      The applicant unsuccessfully disputes those considerations by arguing that the purchaser of software in a bank or another financial institution is not the same as the purchaser who takes purchasing decisions in financial or monetary affairs. It relies in this regard only on the fact that the opponent is not in the business of supplying software to other competing banks or operators in the financial sector.
39      On the one hand, those arguments are insufficient to call into question the fact that the purchaser of software – identified by the wording of Class 9 as specifically being banks, credit unions, savings institutions, lenders, and other financial institutions and financial-services businesses – may also be the purchaser which makes use of the services in Class 36 covered by the earlier mark.
40      On the other hand, as the Board of Appeal has observed, it is a well-known fact that most financial institutions develop and maintain their own software platforms, through which they provide their respective financial services.
41      According to the case-law, a fact is well known if it is likely to be known by anyone or may be learnt from generally accessible sources (judgment of 9 February 2011, Ineos Healthcare v OHIM – Teva Pharmaceutical Industries (ALPHAREN), T‑222/09, EU:T:2011:36, paragraph 29). It is also established case-law that, in determining the perception that the relevant public will have of the marks at issue, Boards of Appeal can rely on matters of common knowledge, subject to the adversely affected party’s proving an error in the assessment of that common knowledge of those matters (see, to that effect, judgments of 30 June 2015, La Rioja Alta v OHIM – Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 56 (not published), and of 15 October 2018, Apple and Pear Australia and Star Fruits Diffusion v EUIPO – Pink Lady America (WILD PINK), T‑164/17, not published, EU:T:2018:678, paragraph 29).
42      It must be stated that the applicant merely observed that the opponent was not in the business of supplying software to other competing banks or operators in the financial sector but has in no way substantiated its reasoning with evidence designed to call into question, in general terms, the fact that most of the financial institutions developed and maintained their own software platforms and thus to show that the Board of Appeal made an error of assessment when it stated that that fact is well known.
43      Second, as regards whether the abovementioned goods and services were highly interlinked due to their complementary nature, it must be borne in mind that complementary goods or services are those which are closely connected in the sense that one is indispensable or important for the use of the other so that consumers may think that the same undertaking is responsible for the production of those goods or for the provision of those services (judgments of 1 March 2005, Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI), T‑169/03, EU:T:2005:72, paragraph 60; of 17 June 2015, BMV Mineralöl v OHIM – Delek Europe (GO), T‑60/14, not published, EU:T:2015:390, paragraph 23; and of 17 September 2015, Bankia v OHIM – Banco ActivoBank (Portugal) (Bankia), T‑323/14, not published, EU:T:2015:642, paragraph 31).
44      In the present case, it must be stated that the wording of the goods in Class 9 covered by the mark applied for indicates unequivocally that the software concerned is specifically designed for the operation and management of their user – namely banks, credit unions and financial institutions – and for financial transactions, credit and debit cards and financial risk management. The mark applied for therefore referred expressly solely to software that will be used only in the very specific context of financial affairs.
45      It must therefore be held that that software has a close connection with financial affairs, monetary affairs, financial advice, financial information and financial sponsorship. It is perfectly conceivable that a professional public which uses the services of a provider in financial affairs, monetary affairs or financial advice is offered specialised software by the provider in question making it possible to provide those services.
46      In that context, no relevance attaches to the applicant’s reference to the judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel)
(T‑316/07, EU:T:2009:14, paragraph 54), in which the Court found that the computerised hotel reservation services in Class 42 and computer software for the reservation, booking and payment of accommodation in Classes 39 and 42 were not complementary.
47      In that case, after stating that the Board of Appeal had been fully entitled to find that the goods and services covered by the marks at issue were intended for different publics, the Court noted that the complementary nature of the goods and services implied that they could be used together, which presupposed that they were intended for the same public. By definition, goods intended for different publics cannot be complementary (see, to that effect, judgments of 27 September 2012, Pucci International v OHIM – El Corte Inglés (Emidio Tucci), T‑357/09, not published, EU:T:2012:499, paragraph 50, and of 17 February 2017, Batmore Capital v EUIPO – Univers Poche (POCKETBOOK), T‑596/15, not published, EU:T:2017:103, paragraph 43). The Court inferred from this that there could be no complementary connection between, on the one hand, the goods or services which were necessary for the running of a commercial undertaking and, on the other, the goods or services produced or supplied by that undertaking. It found that, in the case in question, the two categories of goods and services referred to in paragraph 46 above were not used together, since those in the first category were used by the relevant undertaking itself, whereas those in the second were used by the customers of that undertaking (see, to that effect, judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 58).
48      That, however, is not the case here, since the same customers are involved with both the goods in Class 9 and the services in Class 36, namely banks, credit unions, savings institutions, lenders, and other financial institutions and financial-services businesses.
49      To that effect, it should be noted that, in paragraphs 35 to 41 of its judgment of 29 September 2011, Telefónica O2 Germany v OHIM – Loopia (LOOPIA) (T‑150/10, not published, EU:T:2011:552), the Court found that there was a close connection between the goods ‘electronic data processing and telecommunications software’ in Class 9 and the services of ‘rental of data processing equipment and computers’, of ‘computer programming’ and of ‘rental of data processing installations and computers’ respectively in Classes 38 and 42, on the one hand, and ‘services of hosting computer sites’ in Class 42, on the other. It took the view that the former were essential for the setting up and use of internet site hosting services which enabled documents, pictures, videos or banners to be placed on the server of the internet site host provider so that they could be accessed by internet users. It thus concluded that there was a functional complementarity between those goods and those services.
50      In that context, the Court highlighted the difference between that case and the case that gave rise to the judgment of 22 January 2009, easyHotel (T‑316/07, EU:T:2009:14), in that the reference public could, in respect of those goods and those services, be partially common. In order clearly to differentiate the two cases, it stated that, although computerised hotel reservation services used computer technology only to support the provision of reservation services, internet site hosting services are the services themselves, which the client would use to store information or documents (see, to that effect, judgment of 29 September 2011, LOOPIA, T‑150/10, not published, EU:T:2011:552, paragraph 42).
51      Similar reasoning may be applied in the present case. First, it has been stated in paragraph 48 above that the reference public in respect of the goods and services covered by the marks at issue is the same. Secondly, there is a functional complementarity between those goods and those services.
52      Consequently, the Board of Appeal did not make an error of assessment in concluding that the goods in Class 9 and the services in Class 36, listed respectively in paragraphs 3 and 6 above, were similar to an average degree.
53      In the second place, as regards the comparison of the services in Class 36 covered by the marks at issue, the Board of Appeal found, in paragraph 44 of the contested decision, that they were identical in that the services covered by the mark applied for were included in the ‘financial affairs’ covered by the earlier mark.
54      That reasoning must be upheld. It should first of all be noted that, according to established case-law, where the services covered by the earlier mark include the services covered by the mark applied for, 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 and the case-law cited; judgment of 12 December 2018, Vitromed v EUIPO – Vitromed Healthcare (VITROMED Germany), T‑821/17, not published, EU:T:2018:912, paragraph 40).
55      It must be stated that, by its very general wording, the ‘financial affairs’ covered by the earlier mark include financial transaction processing and verification, payment processing, funds transfer, collections, credit card, debit card, and prepaid card processing, and fraud and risk management services all for banks, credit unions, savings institutions, lenders, and other financial institutions and financial-services businesses.
56      Next, it should be noted that, as stated in paragraph 30 above, the comparison of the services must relate to those covered by the registration of the marks in question and not to those for which the earlier mark has in fact been used. The services covered by the earlier mark contain no wording which implies a limitation ‘to ordinary consumers’.
57      In the absence of an express limitation, in the description of the services in Class 36 covered by the earlier mark, to a type of consumer, it must be held that those services are directed at a public composed of both professionals and the public at large (see, to that effect and by analogy, judgments of 26 September 2012, IG Communications v OHIM – Citigroup and Citibank (CITIGATE), T‑301/09, not published, EU:T:2012:473, paragraph 54; of 30 September 2015, Sequoia Capital Operations v OHIM – Sequoia Capital (SEQUOIA CAPITAL), T‑369/14, not published, EU:T:2015:733, paragraph 22; and of 22 September 2016, Grupo de originación y análisis v EUIPO – Bankinter (BK PARTNERS), T‑228/15, not published, EU:T:2016:530, paragraph 26).
58      Thus, the applicant’s reasoning seeking to show that the services in Class 36 covered by the earlier mark and those in the same class covered by the mark applied for are not identical, on the alleged ground that they are directed at different consumers, is based on the unproven and, moreover, incorrect premiss that those services in Class 36 covered by the earlier mark are directed, in essence, only at the public at large.
59      Consequently, the Board of Appeal did not make an error of assessment in finding that there was an average degree of similarity between the goods in Class 9 covered by the mark applied for and the services in Class 36 covered by the earlier mark, on the one hand, and, on the other, that the services in Class 36 covered by the earlier mark and those in the same class covered by the mark applied for were identical.
The complaint alleging errors in the visual and phonetic comparison of the signs at issue
60      The applicant submits that errors were made in the phonetic and visual comparison of the signs. It observes that acronyms are common in the world of finance and that the signs are therefore likely to be perceived as acronyms for much longer company names. The average consumer would consequently be more aware of any phonetic differences between the two acronyms. It submits that, as an acronym, the earlier mark will probably be pronounced as two syllables or four syllables – namely ‘i-fiss’ or ‘eye-ef-eye-es’ – whereas the contested mark will be pronounced as only one syllable, that the differences at the beginning of a mark have a greater impact than differences elsewhere, that the acronyms at issue will be pronounced differently in different parts of the European Union and that the Board of Appeal, in order to conclude that the signs at issue were phonetically similar only to a low degree, incorrectly based its reasoning on the fact that the signs coincided in the pronunciation of an identical string of three letters and differed merely in the pronunciation of one extra letter.
61      EUIPO disputes those arguments.
62      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 the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
63      In the present case, before addressing the issue of the visual and phonetic similarity of the marks at issue, it is necessary, first, to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the marks at issue.
64      For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35 and the case-law cited).
65      As is apparent from the contested decision, the word element ‘fis’ of the mark applied for occupies the most important position in the contested figurative sign. The average consumer will more easily refer to the goods or services in question by quoting the word element of the mark in question than by describing the figurative element (see, to that effect, judgment of 25 April 2018, Perfumes y Aromas Artesanales v EUIPO – Aromas Selective (Aa AROMAS artesanales), T‑426/16, not published, EU:T:2018:223, paragraph 83). Similarly, that word element has a normal degree of inherent distinctiveness, since it has no descriptive meaning in relation to the goods and services in question. In addition, that finding is not disputed by the applicant, with the result that the meanings – on which it relies – that the word ‘fis’ might have in certain parts of the European Union do not call into question the normal inherent distinctiveness of that word element.
66      Moreover, the finding that the earlier mark has a normal degree of inherent distinctiveness is not disputed and must be upheld.
67      In the second place, it is necessary to examine whether the Board of Appeal erred in the visual and phonetic comparison of the signs.
68      At the outset, it must be pointed out that the Board of Appeal’s findings that the signs are not conceptually similar or that such a comparison is impossible are not disputed by the applicant and must be upheld.
69      In the contested decision, the Board of Appeal found that the signs were visually and phonetically similar at least to an average degree, since they coincided in the identical sequence or the identical pronunciation of three letters and merely differed in an extra letter or the pronunciation of that letter, although situated at the beginning of the earlier mark.
70      Such an analysis is not vitiated by any error of assessment.
71      First, phonetically, the word element ‘fis’ of the mark applied for is wholly reproduced in the earlier mark, thereby giving rise to a phonetic resemblance between the signs at issue (see, to that effect and by analogy, judgments of 29 January 2013, Fon Wireless v OHIM – nfon (nfon), T‑283/11, not published, EU:T:2013:41, paragraph 48, and of 5 October 2020, X-cen-tek v EUIPO – Altenloh, Brinck & Co. (PAX), T‑847/19, not published, EU:T:2020:472, paragraphs 109 to 112). The signs in question share the same syllable ‘fis’ and the earlier mark contains only one syllable more, namely that corresponding to the vowel ‘i’. In addition, the sound ‘fis’ produced by the syllable common to the two signs creates a longer effect than that of the first syllable of the earlier mark due to the presence of the letters ‘f’ and ‘s’, which surround the vowel ‘i’.
72      In that context the applicant’s assertion that acronyms are common in the world of finance is not in itself sufficient to prove that the earlier mark will be pronounced as four syllables. Even if that were proved, it must in any event be held that that cannot call into question the finding that the signs at issue are phonetically similar to an average degree. In such a case, the word element of the mark applied for will also be pronounced as an acronym in three syllables. The last three syllables of the earlier mark will therefore be phonetically identical.
73      Moreover, it is necessary to reject the argument that the consumer is more attentive to the differences between acronyms on the alleged ground that it is already possible for those acronyms to designate much more significant company names, namely ‘Istituto di Finanziamento e Sconto’, on the one hand, and ‘Fidelity National Information Services’, on the other. As EUIPO quite rightly observes, the alleged conceptual content of the marks at issue does not stem from their intrinsic characteristics and, on the contrary, requires specific proof of their extensive presence on the market. However, the applicant’s line of argument on that point is based on a mere unsubstantiated assertion.
74      Secondly, visually, the signs in question share the same three letters ‘f’, ‘i’ and ‘s’ and the earlier mark contains only one additional letter, namely the vowel ‘i’. It should also be noted that the figurative elements of the mark applied for are minor and that the word element ‘fis’ is dominant. Consequently, neither the vowel ‘i’ nor the abovementioned figurative elements can serve to counteract the similarities resulting from the presence of the dominant word element (see, to that effect and by analogy, judgments of 29 January 2013, nfon, T‑283/11, not published, EU:T:2013:41, paragraphs 48 to 51, and of 5 October 2020, PAX, T‑847/19, not published, EU:T:2020:472, paragraphs 101 to 103).
75      Next, for the reasons mentioned in paragraph 72 above, the argument relating to the impact on the visual perception of the marks at issue due to the fact that the word elements are read as acronyms must be rejected.
76      Lastly, in maintaining that the differences at the beginning of a mark are greater than the differences which are found elsewhere, the applicant has not, however, demonstrated that the Board of Appeal made an error of assessment in the present case. Although it is clear from the case-law that the consumer normally attaches more importance to the first part of trade marks consisting of words, it is not obligatory to start from that premiss. The Board of Appeal and the Court may, without derogating from any ‘principle’ or ‘criterion’, hold that the end of signs which are the subject of opposition proceedings is more distinctive or dominant than the beginning of those signs or even that one of the elements in those signs is not more distinctive or dominant than the other (see, to that effect, order of 28 June 2012, TofuTown.com v Meica, C‑599/11 P, not published, EU:C:2012:403, paragraph 31, and judgment of 28 April 2021, Klaus Berthold v EUIPO – Thomann (HB Harley Benton), T‑284/20, not published, EU:T:2021:218, paragraph 103).
77      In the present case, the Board of Appeal was correct in finding, in paragraph 62 of the contested decision, in essence, that the presence of the letter ‘i’ at the beginning of the earlier mark had no effect on the outcome of its decision.
78      Accordingly, the complaint alleging an incorrect assessment of the phonetic and visual similarity of the signs must be rejected.
The complaint alleging errors in the global assessment of the likelihood of confusion
79      The applicant submits, first, that the cumulative effect of the errors which it identified is so significant that the global assessment of the likelihood of confusion is itself incorrect. Secondly, it claims that the Board of Appeal disregarded the fact that the marks at issue have been trading side by side since 2006 without there having been a single instance of confusion between them.
80      EUIPO disputes those arguments.
81      In the contested decision, the Board of Appeal found that, taking into account the relevant factors and their mutual interdependence in the multifactorial assessment and, more particularly, considering that the goods and services in question were partly identical and partly similar, that the signs at issue were visually and phonetically similar to at least an average degree, and that the word element of the sign applied for was entirely included in the earlier mark, the differences between the signs were insufficient safely to rule out all likelihood of confusion even taking into account the relatively high level of attention of the relevant professional public.
82      First, it follows from the foregoing analysis that the Board of Appeal did not err in its assessment of the distinctive and dominant character of the elements of the marks at issue, in the examination of the similarity of the goods and services in question and in the analysis of the similarity of the signs at issue, with the result that the argument based on the cumulative effect of the errors on the global assessment of the likelihood of confusion must be rejected. At most, the only error for which the Board of Appeal may be criticised is that established in paragraph 22 above, which, for the reasons set out in paragraphs 23 and 24 above, has no effect on the lawfulness of the contested decision.
83      Therefore, the argument alleging an incorrect global assessment in view of the cumulative effect of the alleged errors must be rejected.
84      Secondly, it is necessary to reject the applicant’s argument, set out in the application, that the Board of Appeal failed to take into account the fact that it had demonstrated that the marks at issue had coexisted peacefully since 2006.
85      According to the case-law, the peaceful coexistence of two marks on a particular market can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the proprietor of the contested mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the mark upon which it relies and the opponent’s mark and provided that the mark upon which it relies and the marks at issue are identical (see, to that effect, judgment of 11 May 2005, Grupo Sada v OHIM – Sadia (GRUPO SADA),
T‑31/03, EU:T:2005:169, paragraph 86).
86      At the hearing, the applicant acknowledged that, before the Board of Appeal, it had not submitted any specific argument alleging the peaceful coexistence of the marks at issue and that it had also failed to submit any evidence in support of that argument. It stated that, in essence, it had merely claimed that the opponent had not proved that, in demonstrating that there was a likelihood of confusion between the marks at issue, the coexistence of those marks had not been peaceful.
87      As EUIPO notes, such an approach is based, in essence, on a reversal of the burden of proof and manifestly contradicts the requirements of the case-law referred to in paragraph 85 above.
88      It follows that the applicant’s complaint that the Board of Appeal allegedly disregarded a so-called coexistence of the marks at issue is unfounded.
89      In the light of all of the foregoing, the single plea in law must be rejected as unfounded and, accordingly, the action must be dismissed.
Costs
90      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.
91      Since 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 (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Fidelity National Information Services, Inc., to pay the costs.
Tomljenović
Schalin
Nõmm
Delivered in open court in Luxembourg on 4 May 2022.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.