Case T‑561/22 examines a number of complex issues which involved the EUIPO taking new decisions following an annulment in part of an earlier decision by the General Court. It also considers the scope of the proceedings before the Board of Appeal, the power of the court to alter contested decisions and the doctrine of res judicata.
Background
In June 2016 Global Chartered Controller Institute SL (‘CCA’) sought to register the mark below:
The application covered “advertising; business management; business administration; office functions” in Class 35 and “education; providing of training; entertainment; sporting and cultural activities” in Class 41.
CFA Institute (‘CFA’) opposed the application in August 2016, on the basis of the following earlier marks:
1. the word mark CFA (EUTM No 1448596) covering, among others, “printed publications in the field of financial analysis and in support of the interests of financial analysts” in Class 16, “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” in Class 41 and “association services, namely promoting the interests of financial analysts” in Class 42; and
2. the CFA device (EUTM No 1460534, depicted below) for Class 42 services, namely “association services, namely the promotion of education, professional responsibility, ethics and integrity of financial analysts”.
In 2018 the EUIPO’s Opposition Division rejected the opposition on the ground that there was no likelihood of confusion between the marks.
CFA appealed and, in February 2020, the Fifth Board of Appeal upheld the appeal in part (‘the earlier decision’), holding, among other things, that, due to the enhanced distinctiveness of the earlier marks acquired through use, there was a likelihood of confusion between the marks at issue in respect of the “advertising; business management; business administration” services in Class 35 and the “education; providing of training” services in Class 41. The board also found “office functions” in Class 35 and “entertainment; sporting and cultural activities” in Class 41 to be different from the services covered by the earlier marks and, consequently, the mark applied for could be registered in that regard.
CCA brought an action to the General Court, seeking annulment in part of the earlier decision as to the identical and similar services, in which a likelihood of confusion had been found. The court annulled the earlier decision, holding, in essence, that the board was erroneous in its assessment in relation to the relevant public’s level of attention.
The case was remitted to the Second Board of Appeal, which took the view that, following the court’s annulment of the earlier decision, it was dealing with the appeal that was initially brought against the decision of the Opposition Division. Notwithstanding the enhanced distinctiveness of the earlier word mark and the fact that some of the services in question had been regarded as identical or partly similar, the Board of Appeal held that the similarity between the marks at issue was so low that the relevant public could not confuse them. The board rejected the opposition in its entirety for all the services designated by the mark applied for and, therefore, dismissed the action brought before it.
Appeal to the General Court
CFA turned to the General Court, requesting an annulment or alteration of the Second Board of Appeal’s decision.
CCA cross-claimed by challenging the scope of the dispute before the court. It argued that the present dispute must be limited to the identical and similar services, since the assessments of the different services had become final (res judicata), as it had not been appealed by CFA. For this reason, it sought an annulment or alteration of the contested decision. The EUIPO considered that the Board of Appeal’s assessment on the different services should be regarded as “constituting new, independent substantive findings” and called for a dismissal of CCA’s cross-claim.
In examining the main action by CFA, the court agreed with the board that “advertising”, “business management” and “business administration” services in Class 35 possessed a low degree of similarity with CCA’s Class 42 services which covered “association services, namely promoting the interests of financial analysts” and the “association services, namely the promotion of education, professional responsibility, ethics and integrity of financial analysts”. The court concluded that CCA provided “routine management” services that differentiated them from CFA’s Class 35 services relating to the “promotion” of the brand. However, the Class 41“education” services, undisputed by the parties, were held to be identical.
Having taken into account the fact that the normal inherent distinctiveness of the earlier word mark CFA had been enhanced by the use of its acronym, the court considered in the global assessment of the likelihood of confusion that the marks were similar to an average degree and not a low degree, as held by the board.
The General Court, in exercising its jurisdiction to annul or to alter contested decisions from the Board of Appeal, concluded that the decision of the Second Board of Appeal required annulment in part and alteration. It upheld CFA’s opposition for Class 41 services in “education; providing of training” and dismissed CCA’s application for registration of those services.
This article first appeared in WTR Daily, part of World Trademark Review, on 26 November 2024. For further information, please go to www.worldtrademarkreview.com
