Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

9 June 2021 (*)

(EU trade mark – Opposition proceedings – Application for the EU figurative mark CCA CHARTERED CONTROLLER ANALYST CERTIFICATE – Earlier EU word mark CFA and earlier EU figurative mark CFA CHARTERED FINANCIAL ANALYST – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Relevant public – Level of attention)

In Case T‑266/20,

Global Chartered Controller Institute SL, established in Alicante (Spain), represented by M. Pomares Caballero and T. Barber Giner, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by P. Villani and A. Folliard-Monguiral, acting as Agents,

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 G. Engels and W. May, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 25 February 2020 (Case R 235/2019-5), relating to opposition proceedings between CFA Institute and Global Chartered Controller Institute,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and B. Berke, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 8 May 2020,

having regard to the response of EUIPO lodged at the Court Registry on 27 October 2020,

having regard to the response of the intervener lodged at the Court Registry on 21 October 2020,

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

 Background to the dispute

1        On 6 June 2016, the applicant, Global Chartered Controller Institute SL, 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 services in respect of which registration was sought are in Classes 35 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, and correspond, for each of those classes, to the following description:

–        Class 35: ‘Advertising; business management; business administration; office functions’;

–        Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.

4        The trade mark application was published in European Union Trade Marks Bulletin No 2016/126 of 8 July 2016.

5        On 29 August 2016, the intervener, CFA Institute, 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 the services referred to in paragraph 3 above.

6        The opposition was based, inter alia, on the following earlier marks:

–        the EU word mark CFA, filed on 4 January 2000 and registered on 2 March 2001 under No 1 448 596, covering, inter alia, services in Classes 16, 41 and 42 corresponding, respectively, to the following description: ‘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.

–        the EU figurative mark reproduced below, filed on 13 January 2000 and registered on 8 October 2002 under No 1 460 534, covering services in Class 42 corresponding to the following description: ‘Association services, namely the promotion of education, professional responsibility, ethics and integrity 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 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

8        On 30 November 2018, the Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion between the marks at issue.

9        On 30 January 2019, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the entirety of the Opposition Division’s decision.

10      By decision of 25 February 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the appeal in part.

11      First, as regards the comparison of the services, the Board of Appeal found that the services in Classes 35 and 41 covered by the mark applied for were, in part, identical or similar to different degrees and, in part, dissimilar to the services in Classes 16, 41 and 42 covered by the earlier marks.

12      In particular, the Board of Appeal found that the ‘advertising; business management; business administration’ services in Class 35 and the ‘education; providing of training’ services in Class 41 covered by the mark applied for had a variable degree of similarity with the ‘association’ services in Class 42 covered by the earlier marks. Similarly, it took the view that the ‘education; providing of training’ services referred to above had to be regarded as identical to the ‘educational services’ in Class 41 covered by the earlier marks, in so far as the latter services were included in the former services. By contrast, the Board of Appeal found that the ‘office functions’ services in Class 35 and the ‘entertainment; sporting and cultural activities’ services in Class 41 covered by the mark applied for were dissimilar to the ‘printed publications in the field of financial analysis’, ‘educational services’ and professional ‘association services’ in Classes 16, 41 and 42 covered by the earlier marks.

13      Secondly, the Board of Appeal found that the relevant public, for the purpose of assessing the likelihood of confusion between the marks at issue in respect of the services found to be identical or similar, consisted of both the general public interested in (further) education and training and a specialised public composed of business professionals and professionals in the field of finance, who had specific knowledge or expertise. The Board of Appeal therefore found that the level of attention would vary from average to high and that, in that context, it was necessary to take into consideration, in accordance with the case-law, the lowest level of attention, namely that of the consumer who is part of the general public. Furthermore, the Board of Appeal focused on the German public when assessing the likelihood of confusion between the marks at issue.

14      Thirdly, as regards the comparison of the signs, the Board of Appeal found that their visual, phonetic and conceptual similarity was low to average, except in the case of the earlier word mark in respect of which the signs were found to be different, given the lack of meaning of that earlier word mark.

15      Fourthly, as regards the assessment of the likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal found, in the light of the evidence submitted by the intervener, that the earlier marks had enhanced distinctiveness acquired through use at least in Germany. On that basis, the Board of Appeal found that, as regards the services that had been found to be identical or similar, it could not be ruled out that, in the presence of the contested composite sign and its dominant verbal element ‘CCA’, the relevant public may confuse the contested sign with the element ‘CFA’ of the earlier marks, in particular given the broad protection enjoyed by those marks in Germany. By contrast, the Board of Appeal considered that no likelihood of confusion could be found in respect of the services that had been found to be dissimilar.

16      Fifthly, as regards the services found to be dissimilar, the Board of Appeal came to the conclusion that the appeal was also unfounded under Article 8(5) of Regulation 2017/1001, given, first, that the evidence furnished by the intervener did not establish that the earlier marks had a reputation in respect of those services and, secondly, that it was highly unlikely that the relevant public would make a mental association between the signs at issue for dissimilar services.

17      In the light of the foregoing considerations, the Board of Appeal annulled the contested decision in so far as it rejected the opposition in respect of the ‘advertising; business management; business administration’ services in Class 35 and the ‘education; providing of training’ services in Class 41. By contrast, it confirmed the registration of the mark applied for in respect of the ‘office functions’ services in Class 35 and the ‘entertainment; sporting and cultural activities’ services in Class 41.

 Forms of order sought

18      The applicant claims that the Court should:

–        alter the contested decision by finding that the conditions for applying the relative ground for refusal of registration laid down in Article 8(1)(b) of Regulation 2017/1001 are not satisfied;

–        in the alternative, annul the contested decision;

–        order EUIPO to bear the costs of the proceedings before the Court and the Board of Appeal and order the intervener to bear the costs of the proceedings before the Opposition Division.

19      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Determining the applicable regulation ratione temporis

20      Given the date on which the application for registration at issue was filed, namely 6 June 2016, 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).

21      Consequently, in the present case, so far as concerns the substantive rules, the references to Article 8(1)(b) of Regulation 2017/1001 and to the first sentence of Article 94(1) thereof made by the Board of Appeal in the contested decision and by the parties in their written pleadings must be understood as referring to, respectively, Article 8(1)(b) of Regulation No 207/2009 and the first sentence of Article 75 thereof, as amended, the wording of which is identical.

22      Moreover, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), any procedural issues are governed by Regulation 2017/1001, which was in force at the time when the contested decision was adopted.

 The claim for annulment of the contested decision

23      In support of its claim for annulment, the applicant relies on two pleas in law alleging infringement of (i) Article 8(1)(b) of Regulation No 207/2009 and (ii) the first sentence of Article 75 of that regulation.

24      As regards the applicant’s first plea, it is based on four complaints seeking to establish that the Board of Appeal erred, in the first place, in the definition of the relevant public and its level of attention, in the second place, in the comparison of the signs at issue, in the third place, in the assessment of the enhanced distinctiveness of the earlier marks in Germany and, in the fourth place, in the overall assessment of the likelihood of confusion between the marks at issue.

25      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

26      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

27      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

28      As a preliminary point, it must be stated, as observed by EUIPO, that the applicant does not dispute the conclusion drawn by the Board of Appeal, in paragraphs 26 to 34 of the contested decision, regarding the comparison of the services covered by the marks at issue, according to which, in essence, the services in Classes 35 and 41 covered by the mark applied for were, in part, identical or similar to different degrees and, in part, dissimilar to the services in Classes 16, 41 and 42 covered by the earlier marks.

29      As regards the first complaint in the first plea, relating to the relevant public for the services found to be identical or similar, the applicant complains that the Board of Appeal incorrectly and imprecisely defined both the public targeted by the services in question and the level of attention of that public. In particular, it claims that the Board of Appeal incorrectly concluded that that public consisted of both a specialised public and the general public and that, in that context, it was necessary to take into account an average level of attention when assessing the likelihood of confusion. According to the applicant, first, the relevant public should be regarded as consisting exclusively of a specialised public, linked to financial analysis or financial analysts, on account, inter alia, of the specific nature of the services covered by the earlier marks. Secondly, it submits that that public will, in all cases, display a high level of attentiveness, in view of the fact that the services are specific to the financial sector or linked to financial matters. In the applicant’s view, it is apparent from the case-law that such services require particular attention and, when being selected, call for a precise and informed choice given that the public targeted by those services does not make use of them on a daily basis.

30      EUIPO, supported by the intervener, disputes those arguments, arguing that the Board of Appeal’s assessment of the relevant public and its level of attention should be upheld. In essence, they contend that the level of attention of that public should be considered to be average, in so far as the consumers concerned consist not only of professionals but also the general public. Furthermore, both EUIPO and the intervener take the view that the case-law cited by the applicant in support of its arguments is in no way analogous to the present case. In that regard, the intervener maintains, in particular, that, unlike in the judgments relied on, the services concerned by the earlier marks do not relate to the financial sector, but rather to the field of education. It adds that, contrary to the applicant’s assertions, those services do not involve substantial investment by the relevant consumers to an extent that would justify a heightened level of attention.

31      In accordance with the case-law, the definition of the relevant public and its level of attention in relation to the marks at issue is of crucial importance for the assessment of the likelihood of confusion, since that assessment must not be carried out on the basis of an abstract comparison of the signs at issue and the goods or services covered by those signs, but must, rather, be based on the perception which the relevant public will have of those signs, goods and services (see, to that effect, judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 29).

32      As regards the level of attention of the relevant public, for the purposes of the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of 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).

33      It is also apparent from the case-law that the relevant public is composed of consumers likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (see judgment of 8 May 2014, Pyrox v OHIM – Köb Holzheizsysteme (PYROX), T‑575/12, not published, EU:T:2014:242, paragraph 32 and the case-law cited).

34      As a general rule, when goods or services covered by one of the marks at issue are included in the broader designation covered by the other mark, the relevant public is to be defined by reference to the more specific wording (judgment of 30 September 2010, PVS v OHIM ‐ MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, not published, EU:T:2010:419, paragraph 28).

35      Furthermore, account must be taken of the fact that a restricted and specialised public is likely to have specific knowledge of the goods or services covered by the marks at issue and to display, in that regard, a higher level of attentiveness than the general public. Those factors may play a decisive role in determining whether or not there is a likelihood of confusion between those marks (see judgment of 24 May 2011, ancotel, T‑408/09, not published, EU:T:2011:241, paragraph 30 and the case-law cited).

36      In the present case, it is apparent, in essence, from paragraphs 26 to 28 and from paragraphs 31 and 32 of the contested decision that the Board of Appeal found that the services in Class 35 covered by the mark applied for were aimed at the professional public, whereas those in Class 41 were aimed at both the general public and professionals. On that basis, the Board of Appeal found, in paragraphs 38 and 66 of the contested decision, that, as regards those two classes, the level of attention would vary from average to high and concluded that, in the assessment of the likelihood of confusion between the marks at issue, it was necessary to take into consideration, in accordance with the case-law, the lowest level of attention, namely that of the consumer who is part of the general public.

37      That analysis cannot be endorsed.

38      In the first place, as regards the ‘advertising; business management; business administration’ services in Class 35, it must be borne in mind that, according to settled case-law, the services in such a class are aimed at a professional public displaying a higher level of attentiveness (see, to that effect, judgment of 19 May 2015, Granette & Starorežná Distilleries v OHIM – Bacardi (42 VODKA JEMNÁ VODKA VYRÁBĚNÁ JEDINEČNOU TECHNOLOGIÍ 42%vol.), T‑607/13, not published, EU:T:2015:292, paragraph 33 and the case-law cited).

39      First, as regards ‘advertising’ services, such services are used by a large number of professionals whose level of attention is, according to the case-law, high (see, to that effect, judgments of 13 December 2016, Apax Partners v EUIPO – Apax Partners Midmarket (APAX), T‑58/16, not published, EU:T:2016:724, paragraph 27, and of 13 March 2018, Kiosked v EUIPO – VRT (K), T‑824/16, EU:T:2018:133, paragraphs 39 and 43).

40      Secondly, as regards ‘business management; business administration’ services, which are principally intended to help in the working or management of a commercial undertaking (see, to that effect, judgment of 30 September 2010, medidata, T‑270/09, not published, EU:T:2010:419, paragraph 51), such services are usually rendered by specialised companies, whose main purpose is to gather information and to provide tools and expertise to enable their customers, who are themselves professionals, to carry on their business activities or to provide businesses with the necessary support to develop (see, to that effect, judgment of 18 October 2011, dm-drogerie markt v OHIM – Semtee (caldea), T‑304/10, not published, EU:T:2011:602, paragraph 25). According to the case-law, those services are aimed at a specialised group of persons, including experts and persons who require professional advice on financial, legal or commercial matters. That is, therefore, a user profile which is very specialised or well informed (judgment of 11 May 2005, CM Capital Markets v OHIM – Caja de Ahorros de Murcia (CM), T‑390/03, EU:T:2005:170, paragraphs 6 and 26).

41      Therefore, it must be held that, even though the Board of Appeal correctly established that the services in Class 35 covered by the mark applied for concerned only a public composed of professionals, it erred in taking into account, when assessing the likelihood of confusion between the signs at issue for that class, an average, rather than high, level of attention.

42      In that regard, it should be noted that, although the case-law cited by the Board of Appeal in paragraph 38 of the contested decision establishes the principle that, when the relevant public consists of both the general public and professionals, the lowest level of attention of those two groups must be taken into account, that principle may not be applied to categories of services for which, as in the present case, the relevant public consists only of professionals.

43      In the second place, as regards the ‘education; providing of training’ services in Class 41 covered by the mark applied for, first, it should be noted at the outset that, in the comparison set out in paragraphs 31 and 32 of the contested decision, the Board of Appeal found that those services had to be regarded as identical to the ‘educational services’ in Class 41 covered by the earlier word mark. In particular, the latter services are defined in the registration of that word mark as ‘arranging, conducting and providing courses of instruction, workshops, seminars, and conferences in the field of financial analysis and distributing course materials in connection therewith’.

44      Secondly, the Board of Appeal found that the same services in Class 41 covered by the mark applied for were similar to both the ‘association services’ in Class 42 covered by the earlier word and figurative marks. The latter two categories of services are defined more specifically, in the registration of each of those marks, as services ‘promoting the interests of financial analysts’ and services for the ‘promotion of education, professional responsibility, ethics and integrity of financial analysts’.

45      It follows that, as is argued by the applicant, the relevant public and its level of attention, for the purpose of assessing the likelihood of confusion between the marks at issue, should have been defined, in accordance with the case-law cited in paragraph 34 above, in relation to the services covered by the earlier marks, as specifically defined in the registration of those marks.

46      In that regard, contrary to what the Board of Appeal found in paragraph 34 of the contested decision, it must be held that the services covered by the earlier marks, including those in the field of education, are aimed at consumers who, even though they are part of both a specialised public and the general public, are deemed, in all cases, to display a high level of attentiveness.

47      It must be held that, although the services covered by the earlier marks do not concern the financial sector, as the intervener maintains, the fact remains that they are defined in relation to a very specific aspect of economic training, namely financial analysis. In that context, consumers interested in those services, even if they are part of the general public, will pay particular attention to them when choosing which programmes they prefer, usually after examining and comparing the educational offers available, as noted by the applicant.

48      In that regard, it should be noted that, since consumers do not make use of financial training services on a daily basis, their level of attentiveness cannot be equivalent to that displayed by them in respect of everyday consumer services, but must rather necessarily be considered to be higher (see, to that effect, judgment of 13 October 2009, Deutsche Rockwool Mineralwoll v OHIM – Redrock Construction (REDROCK), T‑146/08, not published, EU:T:2009:398, paragraph 45 and the case-law cited).

49      In addition, contrary to the argument put forward by the intervener, the investment required to access the training services covered by the earlier marks also justifies taking into account a high level of attention on the part of the consumers concerned, given that the prices of financial training programmes are, as is apparent from the documents available to EUIPO, not insignificant and often rely on the award of study grants.

50      Thus, contrary to the conclusion reached by the Board of Appeal, as regards the services in Class 41 covered by the mark applied for, which were found to be identical or similar to the services in Classes 41 and 42 covered by the earlier marks, the level of attention of the average consumer, whether that consumer is a member of the general public or a professional, must be regarded as high.

51      In the light of the foregoing, the Board of Appeal erred in concluding, in paragraphs 38 and 66 of the contested decision, that, for the purpose of assessing the likelihood of confusion between the marks at issue in relation to the services covered by those marks, it was appropriate to take into account an average level of attention, instead of a high level of attention.

52      That error vitiated the whole of the Board of Appeal’s assessment of the possible likelihood of confusion between the marks at issue. Although it cannot, a priori, be ruled out that, even for a public displaying a high level of attentiveness, such a likelihood of confusion may exist where the marks and services at issue are identical or similar, the fact remains that, as has already been pointed out in paragraph 31 above, that assessment must be based on the actual perception of those marks and services by the relevant public.

53      It follows that the contested decision must be annulled, without it being necessary either to examine the other complaints relied on by the applicant in connection with its first and second pleas, or to rule on the admissibility of Annex A6 to the application, which is contested by the intervener.

 Claim for alteration of the contested decision

54      As regards the applicant’s claim that the Court should alter the contested decision by finding that the conditions for the application of the relative ground for refusal of registration laid down in Article 8(1)(b) of Regulation No 207/2009 are not satisfied, it must be recalled that the power of the General Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).

55      In the present case, the conditions for the exercise of the General Court’s power to alter decisions, as set out in the judgment of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452), are not satisfied.

56      As has been pointed out in paragraphs 51 and 52 above, the Board of Appeal did not examine, in the contested decision, whether there was a likelihood of confusion between the marks at issue, relying on the relevant public having a high level of attention with regard to the services in Class 35 and Class 41 covered by the mark applied for that were found to be identical or similar to the services covered by the earlier marks. It is not therefore for the Court to do so for the first time in the context of its review of the legality of the contested decision (see, to that effect, judgment of 12 May 2010, Beifa Group v OHIM ‐ Schwan-Stabilo Schwanhäußer (Instrument for writing), T‑148/08, EU:T:2010:190, paragraph 124 and the case-law cited).

57      In those circumstances, since the Court is not able to exercise its power to alter the contested decision, the applicant’s claim in that regard must be rejected.

 Costs

58      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. In the present case, EUIPO and the intervener have been unsuccessful. As the applicant has claimed that only EUIPO should be ordered to pay the costs of the proceedings before the Court, EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant in connection with the present proceedings.

59      In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs relating to the present proceedings.

60      In addition, the applicant has claimed, first, that EUIPO should be ordered to pay the costs that it incurred in the administrative proceedings before the Board of Appeal and, secondly, that the intervener should be ordered to pay the costs that it incurred in the administrative proceedings before the Opposition Division.

61      In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case in respect of the costs incurred for the purposes of the proceedings before the Opposition Division (see, to that effect, judgment of 7 December 2017, Coca-Cola v EUIPO – Mitico (Master), T‑61/16, EU:T:2017:877, paragraph 126 and the case-law cited).

62      Accordingly, first, as regards the costs incurred by the applicant before the Board of Appeal, it is sufficient to note that, given that the present judgment upholds the action brought against the contested decision, those costs are reserved pending the outcome of the proceedings before EUIPO, in accordance with Article 72(6) of Regulation 2017/1001. Secondly, the applicant’s request that the intervener be ordered to pay the costs of the administrative proceedings before the Opposition Division of EUIPO, which do not constitute recoverable costs, cannot be upheld.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 February 2020 (Case R 235/2019-5);

2.      Orders EUIPO to bear its own costs and to pay those incurred by Global Chartered Controller Institute SL, with the exception of the costs incurred by the latter before the Board of Appeal, which are reserved;

3.      Orders CFA Institute to bear its own costs.

Delivered in open court in Luxembourg on 9 June 2021.

*      Language of the case: English.

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