The General Court has annulled the decision of the EUIPO’s Board of Appeal based on its assessment of a likelihood of confusion. The decision provides a valuable insight into the application of (now) Article 8(1)(b) of Regulation (EU) 2017/1001 and, in particular, on the approach which should be taken to the assessment of the relevant public’s level of attention in relation to specialist goods and services.
Background
On 14 December 2015, the European Federation of Financial Analysts’ Societies ('EFFAS') filed an application to register ‘CEFA Certified European Financial Analyst’ as a trade mark for goods and services in Classes 9 and 41 relating to education and training materials in the field of financial analysis. The application was initially refused by the EUIPO although it did, eventually, agree to register the mark on the basis of acquired distinctiveness.
Shortly after, the CFA Institute ('CFA') filed a notice of opposition against the mark based on its earlier trade mark registrations for ‘CFA’, ‘CFA Institute’ and two figurative marks (registered for, inter alia, goods and services relating to financial analysis). It did so on the basis of a likelihood of confusion pursuant to Article 8(1) (b) and also pursuant Article 8(5), on the basis that its marks enjoyed an enhanced reputation.
The contested decisions
On 21 March 2019, the Opposition Division upheld the opposition based on a finding of a likelihood of confusion. EFFAS’ subsequent appeal was dismissed by the Board of Appeal on the basis of the following findings:
- the goods and services covered by EFFAS’ mark were identical or similar to those covered by the CFA mark;
- the relevant public consisted both of the general public, the level of attention of which was average, and of professionals, whose level of attention was high. It was the public with the lowest level of attention had to be taken into account in the context of the examination as they were “more prone to confusion”;
- the signs were visually similar to an average degree, aurally similar to a high degree or a low degree (depending on the pronunciation of the acronym of EFFAS’ sign) and conceptually dissimilar;
- bearing in mind the notion of ‘imperfect recollection’ and the ‘principle of interdependence’, there was likelihood of confusion on the part of the English-speaking part of the relevant public;
- when considering the EFFAS’ sign as a whole, there was a risk that the relevant public would associate it with the CFA, believing that the mark applied for was the European arm of an entity connected to it, on the assumption that the letter ‘E’ of its acronym would mean ‘European’.
General Court’s Decision
EFFAS applied to the General Court for an annulment of the Board of Appeal’s decision. It did so on the basis that it had erred in its comparison of the signs for the purposes of its finding under Article 8(1)(b). The General Court annulled the decision based on the following findings:
Likelihood of Confusion
The General Court held that the Board of Appeal had erred in its finding that the general public’s level of attention was ‘average’ for the goods and services in issue. Education and training services concerning the field of financial analysis were not everyday services and should not be assessed as such. The General Court pointed to recent case law in support of the proposition that consumers interested in those services, even if they are part of the general public, would pay particular attention to them.
The Board of Appeal’s error had an impact on its global assessment of the likelihood of confusion. The General Court therefore annulled the decision and asked the Board to resume its analysis, having regard to the higher level of attention that would be paid by the general public.
Likelihood of association
When an opposition is based on marks displaying characteristics which give grounds for regarding them as forming part of a ‘series', this can be relevant to the assessment of a likelihood of confusion. A likelihood of confusion is created by the possibility of association where the mark applied for displays such similarities to the ‘series’ that it may lead the consumer to believe they originate from the same, or related, commercial origin.
In the present case, whilst the CFA pointed to its extensive use of its ‘family’ of marks in support of its opposition, the Board of Appeal had proceeded on the basis of a comparison with the earlier ‘CFA’ mark only, and had therefore failed to ascertain there was a ‘series’ with which the general public might associate with EFFAS’ mark. Accordingly, the General Court held that it had failed to establish the substantive conditions inherent in the concept of a likelihood of association in this context, thereby vitiating its examination of the same.
Comment
It is of note that, notwithstanding that EFFAS had not sought to dispute the Board of Appeal’s reasoning on the general public’s level of attention, the General Court considered it necessary to depart from its assessment since that reasoning had formed part of the findings in dispute. Although it cannot be ruled out that a likelihood of confusion may still be found to exist for a public displaying a high level of attentiveness, the decision serves as a useful reminder that the assessment must always be based on the actual perception of those marks and services by the relevant public.
This article was written by Chloe Perea Poole and a version first appeared on WTR Weekly, part of World Trademark Review, in January 2022.
For more information or if you have any questions, please contact Chloe Perea Poole, or your usual IP team contact.
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