Source: EURLEX
Language: en
Format: md

JUDGMENT OF THE GENERAL COURT (Second Chamber)

10 September 2025 ([\*](#Footnote*))

( EU trade mark – Opposition proceedings – Application for the EU word mark CEFA Certified European Financial Analyst – Earlier EU word mark CFA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Lack of peaceful coexistence )

In Case T‑592/24,

**European Federation of Financial Analysts’ Societies (EFFAS),** established in Frankfurt am Main (Germany), represented by E. Manresa Medina, lawyer,

applicant,

v

**European Union Intellectual Property Office (EUIPO),** represented by J. Ivanauskas, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

**CFA Institute,** established in Charlottesville, Virginia (United States), represented by W. May and S. Reuvers, lawyers,

THE GENERAL COURT (Second Chamber),

composed of A. Marcoulli, President, V. Tomljenović (Rapporteur) and L. Spangsberg Grønfeldt, Judges,

Registrar: V. Di Bucci,

having regard to the written part of the procedure,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

**Judgment**

1        By its action under Article 263 TFEU, the applicant, European Federation of Financial Analysts’ Societies (EFFAS), seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 September 2024 (Case R 1418/2022-2) (‘the contested decision’).

**Background to the dispute**

2        On 14 December 2015, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign CEFA Certified European Financial Analyst 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)).

3        The mark applied for covers goods and services in Classes 9 and 41 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: ‘Electronic educational publications in the field of financial analysis’;

–        Class 41: ‘Provision of training and education; training services relating to finance, insurance, banking, accountancy, law, management; coaching [training]; education services relating to business training; courses (training) relating to finance, insurance, banking, accountancy, law, management; conducting training and educational seminars relating to finance, insurance, banking, accountancy, law, management; career information and advisory services (educational and training advice); educational advisory services; education examination; academic examination services organisation of examinations to grade level of achievement; educational testing; audio-visual display presentation services for educational purposes; organising of educational exhibitions, conferences, symposia; workshops for educational purposes; publication of educational texts, materials, educational matter; all the aforementioned services in the field of financial analysis’.

4        In view of the distinctive character of the mark applied for, acquired through use, within the meaning of Article 7(3) of Regulation No 207/2009, the application was published in *European Union Trade Marks Bulletin*  No 105/2017 of 6 June 2017.

5        On 6 September 2017, the intervener, CFA Institute, 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.

6        The opposition was based, inter alia, on the EU word mark CFA No 1448596 covering goods and services in Classes 16, 41 and 42 corresponding, for each of those classes, to the following description:

–        Class 16: ‘Printed publications in the field of financial analysis and in support of the interests of financial analysts’;

–        Class 41: ‘Educational services, namely arranging, conducting and providing courses of instruction, workshops, seminars, and conferences in the field of financial analysis and distributing course materials in connection therewith’;

–        Class 42: ‘Association services, namely promoting the interests of financial analysts’.

7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009.

8        By decision of 21 March 2019, the Opposition Division upheld the opposition in its entirety, finding that there was a likelihood of confusion.

9        On 16 May 2019, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.

10      By decision of 31 March 2020, the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal on the basis of Article 8(1)(b) of Regulation No 207/2009, confirming that there was a likelihood of confusion.

11      On 13 June 2020, the applicant brought an action before the General Court for annulment of the decision of the Fifth Board of Appeal.

12      By judgment of 21 December 2021, *EFFAS* v *EUIPO* – *CFA Institute (CEFA Certified European Financial Analyst)* (T‑369/20, not published, EU:T:2021:921), the Court annulled the decision of the Fifth Board of Appeal and upheld the action on account of errors of law regarding the fact that the Board of Appeal, first, erred in finding that the level of attention of the general public was average in the context of the examination of the likelihood of confusion and, second, incorrectly failed to assess whether a series of marks, which the intervener had relied on in order to establish that there was a likelihood of association, existed.

13      By decision of 30 March 2022, the First Board of Appeal annulled the Opposition Division’s decision which has been referred to in paragraph 8 above and remitted the case to the Opposition Division in order for it to rule on the issue of the enhanced distinctiveness of the earlier mark and on the issue of whether a family of marks existed.

14      By decision of 9 June 2022, the Opposition Division upheld the opposition, finding that there was a likelihood of confusion and also finding that the earlier mark enjoyed enhanced distinctiveness acquired through use. It stated that, in those circumstances, it was not necessary to rule on whether a family of marks existed.

15      On 1 August 2022, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision referred to in paragraph 14 above.

16      By decision of 21 February 2023, the First Board of Appeal dismissed the applicant’s appeal, finding that there was a likelihood of confusion.

17      On 22 June 2023, the applicant brought an action before the General Court for annulment of the decision of the First Board of Appeal referred to in paragraph 16 above.

18      By judgment of 20 March 2024, *EFFAS* v *EUIPO* – *CFA Institute (CEFA Certified European Financial Analyst)* (T‑213/23, not published, EU:T:2024:189), the Court annulled the decision of the First Board of Appeal. In the first place, the Court upheld most of the findings of the First Board of Appeal relating to the relevant public, the relevant territory, the comparison of the signs and the distinctive character of the earlier mark. First of all, the Court found that there was no need to call into question the findings that the relevant public consisted of the general public and professionals with a high level of attention, or the approach of basing the assessment of the likelihood of confusion on the English-speaking part of the relevant public in the financial analysis sector in Germany and Spain. Next, the Court confirmed that the goods and services covered by the marks at issue were identical or at least similar. Lastly, the Court concluded that the signs at issue were visually and phonetically similar to a high degree and that they were not conceptually similar. In the second place, the Court found, on the basis of those assessments, that a likelihood of confusion could not be ruled out automatically in the present case. However, the Court found that the First Board of Appeal had failed to assess the applicant’s arguments relating to the peaceful coexistence of the marks at issue and to examine the evidence relied on in support of those arguments, even though that was a relevant factor for the purpose of assessing the likelihood of confusion.

19      By the contested decision, the Second Board of Appeal dismissed the appeal on the basis of Article 8(1)(b) of Regulation No 207/2009, finding that there was a likelihood of confusion. First, the Second Board of Appeal found, referring to the judgment of 20 March 2024, *CEFA Certified European Financial Analyst* (T‑213/23, not published, EU:T:2024:189), that, in view of the identity or similarity of the goods and services at issue, the high degree of visual and phonetic similarity and lack of conceptual similarity between the marks at issue, the high level of attention of the relevant public and the enhanced distinctiveness of the earlier mark, a likelihood of confusion between the signs at issue could not be ruled out. Second, the Second Board of Appeal examined the applicant’s arguments relating to the peaceful coexistence of the signs at issue and found that the applicant had not succeeded in establishing the peaceful nature of the coexistence of the signs at issue on the markets concerned, namely Germany and Spain. Consequently, the Second Board of Appeal found that there was a likelihood of confusion on the part of the relevant public, at least in Germany and Spain, and refused registration of the mark applied for on the basis of Article 8(1)(b) of Regulation No 207/2009.

**Forms of order sought**

20      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs.

21      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs in the event that a hearing is convened.

22      The intervener contends, in essence, that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

**Law**

***The applicable** **substantive** **law***

23      Given the date on which the application for registration at issue was filed, namely 14 December 2015, which is decisive for the purpose 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).

24      Consequently, in the present case, the references to Article 8(1)(b) of Regulation 2017/1001 which the applicant made in the arguments put forward must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.

***Substance***

25      In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It claims, in the first place, that the Board of Appeal erred in rejecting its argument alleging peaceful coexistence of the signs at issue. In the second place, the applicant disputes the Board of Appeal’s findings relating to the similarity of the signs at issue.

*Admissibility of the evidence adduced for the first time before the General Court*

26      EUIPO and the intervener dispute the admissibility of Annex A.16 to the application, consisting of an extract from the website of the Comisión nacional del mercado de valores (National Securities Market Commission, Spain), on the ground that it was submitted for the first time before the Court.

27      The purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. Pursuant to Article 95 of that regulation, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, *SPAG* v *OHIM* – *Dann and Backer (HOOLIGAN)*, T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited).

28      Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ pleadings may not change the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, *Fiorucci* v *OHIM* – *Edwin (ELIO FIORUCCI)*, T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).

29      It is apparent from an examination of the file that the applicant produced Annex A.16 to the application for the first time before the Court. That annex must therefore be rejected as inadmissible.

*The second complaint, alleging an error of assessment with regard to the similarity of the signs at issue*

30      The applicant claims that the Board of Appeal’s findings regarding the visual, phonetic and conceptual similarity of the signs at issue are incorrect.

31      EUIPO and the intervener dispute those arguments.

32      EUIPO contends, inter alia, that the analysis of the similarity of the signs at issue has already been examined and decided by the Court and that the decision has the force of *res judicata*. According to EUIPO, the applicant’s arguments relating to the similarity of the signs at issue should therefore be rejected as inadmissible.

33      It is apparent from the case-law that the force of *res judicata* extends only to the grounds of a judgment which constitute the necessary support of its operative part and are, therefore, inseparable from it. Accordingly, when a decision of EUIPO is annulled by the General Court, the grounds on the basis of which that court dismissed certain arguments relied upon by the parties cannot be considered to have gained the force of *res judicata* (judgment of 25 July 2018, *Société des produits Nestlé and Others* v *Mondelez UK Holdings & Services*, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 52 and 53).

34      In the present case, in the judgment of 20 March 2024, *CEFA Certified European Financial Analyst* (T‑213/23, not published, EU:T:2024:189), although the Court rejected the applicant’s arguments relating to the Board of Appeal’s comparison of the signs, it annulled the contested decision on the ground that the Board of Appeal had not examined the line of argument relating to peaceful coexistence. Therefore, it should be noted that the grounds examining the similarity of the signs in that judgment do not have the force of *res judicata*  which that judgment has acquired.

35      Therefore, contrary to what EUIPO submits, the complaint alleging an error of assessment with regard to the similarity of the signs at issue is admissible.

36      However, it should be noted that the applicant’s arguments are, in essence, the same as those which it had already put forward in the case which gave rise to the judgment of 20 March 2024, *CEFA Certified European Financial Analyst* (T‑213/23, not published, EU:T:2024:189). Accordingly, they are not such as to call into question the findings made by the Court in that judgment. Therefore, for the same reasons as those set out, correctly, in paragraphs 32 to 59 of that judgment, the applicant’s arguments that the signs at issue are visually, phonetically and conceptually different must be rejected.

37      Consequently, the second complaint of the single plea in law must be rejected.

*The first complaint, alleging an error of assessment with regard to the evidence relating to the peaceful coexistence of the signs at issue*

38      By its first complaint, the applicant claims that, in the contested decision, the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 by finding that there was no peaceful coexistence of the mark applied for and the earlier mark. In essence, it submits that the Board of Appeal erred in finding that the evidence adduced before the Opposition Division and the Board of Appeal did not support the conclusion that the mark applied for and the earlier mark coexisted peacefully.

39      EUIPO and the intervener dispute the applicant’s arguments.

40      According to the case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion on the part of the relevant public. The absence of a likelihood of confusion may thus be inferred from the peaceful nature of the coexistence of the marks at issue on the market concerned (see judgment of 12 July 2019, *Ogrodnik* v *EUIPO* – *Aviário Tropical (Tropical)*, T‑276/17, not published, EU:T:2019:525, paragraph 79 and the case-law cited).

41      However, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO, the proprietor of the contested mark duly demonstrated, even if only by means of a body of consistent evidence, that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public, in the sense that the public was able to distinguish the earlier mark from the mark relied on by the proprietor of the contested mark. In that regard, evidence demonstrating that the relevant public recognised each of the trade marks at issue before the time when the application for registration of the contested mark was filed is particularly relevant. In addition, in so far as, according to the case-law, the coexistence of two trade marks must be sufficiently lengthy to be capable of influencing the perception of the relevant consumer, the duration of the coexistence also constitutes an essential factor (see, to that effect, judgment of 12 July 2019, *Tropical*, T‑276/17, not published, EU:T:2019:525, paragraph 80 and the case-law cited). It should also be noted that any argument based on coexistence implies a priori, first, that the contested mark and the marks relied on by the proprietor of the contested mark are identical and, second, genuine use of the trade mark on which the applicant relies in the relevant territory (see judgment of 13 September 2023, *Prolactal* v *EUIPO* – *Prolàctea (PROLACTAL)*, T‑549/22, not published, EU:T:2023:538, paragraph 55 and the case-law cited).

42      Above all, it should be noted that the Second Board of Appeal examined the peaceful coexistence of the signs at issue in Germany and Spain, which were the relevant territories taken into account for the purpose of examining the likelihood of confusion.

43      First, it should be noted that the applicant relies primarily on the peaceful coexistence of the marks at issue in Malta and the United Kingdom, and that part of the evidence submitted by the applicant relates solely to the territory of those countries.

44      It must be stated that the Board of Appeal correctly disregarded the evidence from the Maltese and United Kingdom financial authorities submitted in Annexes 6 and 7 to the statement of opposition and then in Annexes 1 to 3 to the appeal before the Fifth Board of Appeal of 21 July 2019. The fact that the financial authorities of Malta and the United Kingdom recognise ‘CFA’ and ‘CEFA’ as valid qualifications for activities in the financial sector is not relevant for establishing peaceful coexistence in Germany and Spain. Moreover, it must be noted that the lists of qualifications issued by the Maltese and the United Kingdom financial authorities do not contain any indication as to the other countries in which those qualifications are recognised.

45      Moreover, as the Board of Appeal noted in the contested decision, the reference in the extract from the website ‘ifsmalta.org’, according to which the ‘Certified European Financial Analyst’ programme has existed since 1991 and allows accreditation in approximately 20 European countries, is not conclusive for establishing the peaceful coexistence raised by the applicant. That document does not contain any indication as to the European countries in which accreditation is possible or the years from which that accreditation was used in those various countries. Therefore, contrary to what the applicant claims, that document does not prove that the mark applied for was present in Germany and Spain at the date of the application for registration of the mark applied for.

46      Second, the applicant relies on the result of an internet search relating to the mark applied for in order to demonstrate its actual use in the relevant territory. In that regard, it should be noted that the applicant produced only the first page of the search result and that that page does not provide any relevant information as to the use and knowledge in Germany and Spain of the mark applied for. In addition, mere presence on the internet does not provide any data as to the impact on the relevant public or its awareness of a trade mark (see, to that effect, judgment of 25 May 2016, *Ice Mountain Ibiza* v *EUIPO* – *Marbella Atlantic Ocean Club (ocean beach club ibiza)*, T‑5/15, not published, EU:T:2016:31, paragraph 38). Accordingly, contrary to what the applicant claims, the fact that the result of the internet search contains a very large number of entries does not prove the presence in Germany and Spain of the mark applied for or the peaceful coexistence of the signs at issue in those territories.

47      Third, the applicant relies on the fact that two marks containing the word element CEFA Certified European Financial Analyst were registered, as an EU trade mark and as a Spanish national trade mark, despite the opposition filed by the intervener. However, it must be held that the marks covered by the registrations relied on by the applicant were not identical to the mark applied for, but differed in the presence of additional, non-negligible word and figurative elements. Therefore, that evidence is not relevant for the purpose of assessing the peaceful coexistence of the marks at issue.

48      Fourth, the applicant submits that the sign CEFA Certified European Financial Analyst has been registered as a German national trade mark since 2001 and that it was the subject of an international registration designating, inter alia, Spain from 2001 to 2011. Such registrations, which do not establish actual use of the marks concerned and therefore their actual presence on the market in question, are insufficient to show that the likelihood of confusion has been eliminated, or even simply reduced (see judgment of 20 November 2017, *Cotécnica* v *EUIPO* – *Visán Industrias Zootécnicas (cotecnica OPTIMA)*, T‑465/16, not published, EU:T:2017:825, paragraph 103 and the case-law cited). In addition, the applicant cannot exempt itself from its obligation to demonstrate that the peaceful coexistence on which it relies is based on the absence of any likelihood of confusion on the part of the relevant public (see, to that effect, judgment of 12 July 2019, *Tropical*, T‑276/17, not published, EU:T:2019:525, paragraph 81). Accordingly, the mere coexistence in the national or EU registers of the marks at issue is not sufficient to establish the peaceful coexistence of the signs at issue.

49      Fifth, the applicant’s argument that the mark applied for was declared registrable on account of its distinctive character acquired through use must be rejected. Distinctive character acquired through use is a different issue from that of peaceful coexistence, which requires it to be demonstrated that coexistence is based on the absence of a likelihood of confusion on the part of the relevant public and therefore on actual use that is sufficiently lengthy to be capable of influencing the consumer’s perception. In addition, the applicant does not refer to any evidence which it may have provided for the purposes of establishing distinctive character acquired through use that would prove that the mark applied for was specifically used in Germany and in Spain.

50      Sixth, the applicant relies on the high level of attention of the public in order to demonstrate peaceful coexistence. In the absence of proof of actual use of the marks at issue in the relevant territories, such a factor does not prove the peaceful coexistence of those marks. As is apparent from the case-law set out in paragraph 41 above, any argument based on peaceful coexistence requires, first, proof of actual use of the mark on which the applicant relies in the relevant territory. As is apparent from paragraphs 44 to 50 above, the applicant has not adduced any evidence to establish actual use in Germany and Spain of the mark applied for. Moreover, and in any event, the high level of attention of the relevant public does not in itself prove that the coexistence of the signs at issue, even if it were established, was based on the absence of any likelihood of confusion on the part of the relevant public.

51      Furthermore, the applicant’s argument that the opponent never produced evidence of a specific case of confusion between the marks at issue must be rejected. As is apparent from the case-law set out in paragraph 41 above, it is for the party relying on peaceful coexistence to establish that that coexistence was based on the absence of a likelihood of confusion on the part of the relevant public.

52      In the light of the foregoing, it must be held that, contrary to what the applicant claims, the evidence which it submitted in the proceedings before EUIPO is not capable of constituting a body of consistent evidence demonstrating that coexistence was based on the absence of any likelihood of confusion on the part of the relevant public between the earlier mark and the marks relied on by the applicant.

53      Consequently, the Board of Appeal was entitled to find that peaceful coexistence of the marks at issue had not been proved and, therefore, that there was a likelihood of confusion on the part of the relevant public, at least in Germany and Spain.

54      In the light of all the foregoing considerations, the first complaint of the single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.

**Costs**

55      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.

56      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, in the absence of a hearing, be ordered to bear its own costs.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      **Dismisses the action;**

2.      **Orders European Federation of Financial Analysts’ Societies (EFFAS) to bear its own costs and to pay those incurred by CFA Institute;**

3.      **Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.**

|  |  |  |
| --- | --- | --- |
| Marcoulli | Tomljenović | Spangsberg Grønfeldt |

Delivered in open court in Luxembourg on 10 September 2025.

|  |  |  |
| --- | --- | --- |
| V. Di Bucci |  | R. Mastroianni |

|  |  |  |
| --- | --- | --- |
| Registrar |  | President |

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[\*](#Footref*)      Language of the case: English.

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