Judgment of the General Court (Sixth Chamber) of 23 April 2018 — Genomic Health v EUIPO (ONCOTYPE DX GENOMIC PROSTATE SCORE)
(Case T‑354/17)
(EU trade mark — Application for EU word mark ONCOTYPE DX GENOMIC PROSTATE SCORE — Absolute ground for refusal — Descriptiveness — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001) — Equal treatment)
1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Aim — Need to preserve availability — Scope of the examination
(Council Regulation No 207/2009, Art. 7(1)(c))
(see para. 23)
2. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Meaning
(Council Regulation No 207/2009, Art. 7(1)(c))
(see para. 24)
3. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Assessment of the descriptive nature of a sign — Criteria
(Council Regulation No 207/2009, Art. 7(1)(c))
(see paras 25, 29)
4. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Word mark ONCOTYPE DX GENOMIC PROSTATE SCORE
(Council Regulation No 207/2009, Art. 7(1)(c))
(see paras 27, 32-39)
5. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Trade mark made up of several elements — Possible for the competent authority to examine each of the elements making up the trade mark — Scope of protection of the mark
(Council Regulation No 207/2009, Art. 7(1)(b))
(see paras 28, 30, 31)
6. EU trade mark — Definition and acquisition of the EU trade mark — Refusal of registration based on one of the absolute grounds for refusal set out in Article 7(1) of Regulation No 207/2009 — Whether sufficient
(Council Regulation No 207/2009, Art. 7(1))
(see para. 42)
7. EU trade mark — Decisions of the Office — Legality — Examination by the EU judicature
(Council Regulation No 207/2009)
(see para. 46)
8. EU trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — EUIPO’s previous decision-making practice — Principle of legality — Need for a strict and complete examination in each particular case
(Council Regulation No 207/2009)
(see paras 47-49)
Re:
| Action brought against the decision of the Fifth Board of Appeal of EUIPO of 14 February 2017 (Case R 1682/2016-5), concerning an application for registration of the word sign ONCOTYPE DX GENOMIC PROSTATE SCORE as an EU trade mark. |
Operative part
The Court:
2. | | Orders Genomic Health, Inc., to pay the costs. |