In a trade mark dispute on likelihood of confusion, the CFI clarified the case law on the level of attention, especially for the fields of advertising and educational offers – and of finance. The case concerned the EU trade marks CFA: earlier word mark and figurative mark against later figurative mark.
When assessing the likelihood of confusion, the similarity of the signs is of course always examined from a phonetic, visual and also conceptual point of view. However, the definition of the so-called “relevant public” and their level of attention with regard to conflicting marks are also very decisive. This is because a likelihood of confusion is always established in relation to the perception of these signs, goods and services by the relevant public.
Nevertheless, the level of attention in particular is not often the focus of court proceedings. However, this was different in this case (CFI, EU:T:2021:342), which concerned the likelihood of confusion of the EU trade marks CFA: earlier word mark and figurative mark against younger figurative mark.
In June 2016, the applicant, Global Chartered Controller Institute SL (Spain), applied to the European Union Intellectual Property Office (EUIPO) for registration of the figurative sign as an EU trade mark. The figurative mark CFA was claimed for “advertising; business management; business administration; office work” (Nice Class 35) and “education; training; entertainment; sporting and cultural activities” (Nice Class 41).
In August 2016, the intervener, CFA Institute (USA), filed an opposition against this trade mark application. It relied on its own earlier EU trade marks, the word mark CFA and the figurative mark CFA, which both claim protection for, inter alia, “organising, conducting and providing courses, workshops, seminars and conferences in the field of financial analysis and distribution and preparation of course materials in connection therewith”.
The opposition was initially rejected, but then at the subsequent instance before the Board of Appeal it was partially upheld. Ultimately, it was found that there was at least a slight similarity and that there was a likelihood of confusion for similar and identical goods or services of the marks in dispute. According to the Board of Appeal, these were “advertising; business management; business administration” in class 35 and “education; training” in class 41, similar to the services covered by the earlier marks “association” in class 42, and “education; training”, identical to the services covered by the earlier marks “education; training” in class 41.
CFA Institute brought an action against this decision before the European Court (CFI). It put forward two pleas in law and the first already included several aspects in the assessment of which the Board of Appeal had erred: Definition of the relevant public and its level of attention, comparison of the conflicting signs, assessment of the highly distinctive character of the earlier marks in Germany and overall assessment of the likelihood of confusion. This is an infringement of (i) Article 8(1)(b) of Regulation No 207/2009.
Focus on level of attention
Of all these aspects, the CFI focused on the degree of attention. This was an interesting focus, which is not often the focus of case law. In fact, with its decision on this case, the CFI clarified the case law on the degree of attention, especially in the areas of advertising and educational offers.
In this respect, the Board of Appeal had held that the public consists of both a specialised public and the general public and that an average level of attention should therefore be taken into account. Indeed, if the relevant public is composed of both the general public and professionals, the lowest level of attention of these two groups is to be taken into account, according to a principle on attention.
Although the CFI confirmed this principle, it nevertheless found an error in the Board of Appeal’s decision. For according to the CFI, the public in the present case consists exclusively of professionals.
Level of attention: Advertising area
According to settled case-law, the services “advertising; business management; business administration” in Class 35 are directed at a specialised public which attracts a higher level of attention, the CFI explained, referring to a corresponding judgment of 2015 (CFI, T-607/13). In particular, services that mainly support the work or management of a commercial enterprise would be aimed at a specialised or well-informed user profile. The court added that, in addition, “advertising services” are used by a large number of traders whose level of attention is high according to the case law (see, inter alia, T-58/16).
Level of attention: Educational offers
It must be assumed, the CFI explained, that the services covered by the earlier marks (including those in the field of education which are directed at consumers) have a high degree of attention in any case, even if they belong to a specialised public as well as to the general public. In other words, people interested in educational services are always very attentive to what is on offer. They would pay particular attention to the choice of their preferred programmes, the CFI explained, usually after examining and comparing the available educational offers.
All the more reason to assume a high level of attention to educational offers in the financial sector, the court added. The attention of consumers, since they do not use financial education services on a daily basis, is necessarily to be regarded as higher in comparison with everyday consumer services.
And even though the services covered by the earlier marks do not relate to the financial sector, the CFI found that they are defined in relation to a very specific aspect of economic education, namely financial analysis.
Level of attention erroneous: decision to be annulled
Therefore, the Board of Appeal erred in assuming only average attention, the Court concluded.
However, this error affected the Board of Appeal’s overall assessment of the possible likelihood of confusion between the marks at issue, the CFI ruled. The assessment of a possible likelihood of confusion must ultimately be based on the actual perception of those marks and services by the relevant public.
Consequently, the CFI annulled the contested decision.
The CFI also declined to rule on whether there would be a likelihood of confusion at all for a high level of attention. The CFI said that it was not for the CFI to carry out a lack of review for the first time in its review of the legality of the contested decision.
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