Judgment of the General Court (Fourth Chamber) of 12 April 2011 – Fuller & Thaler Asset Management v OHIM (BEHAVIOURAL INDEXING and BEHAVIOURAL INDEX)

(Cases T-310/09 and T-383/09)

Community trade mark – Applications for Community word marks BEHAVIOURAL INDEXING and BEHAVIOURAL INDEX – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009)

1.                     Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 33, 44)

2.                     Community trade mark – Procedural provisions – Examination of the facts of the Office’s own motion – Scope (Council Regulation No 207/2009, Art. 76(1)) (see para. 49)

Re:

ACTIONS brought, in Case T-310/09, against the decision of the Grand Board of Appeal of OHIM of 28 April 2009 (Case R 323/2008‑G) concerning an application for registration of the word sign BEHAVIOURAL INDEXING as a Community trade mark and, in Case T-383/09, against the decision of the First Board of Appeal of OHIM of 11 June 2009 (Case R 138/2009‑1) concerning an application for registration of the word sign BEHAVIOURAL INDEX as a Community trade mark.

Information relating to the case

Applicant for the Community trade mark:	Fuller & Thaler Asset Management, Inc.
Community trade mark sought:	Word marks BEHAVIOURAL INDEXING and BEHAVIOURAL INDEX for goods and services in classes 9 and 36 – Applications Nos 5785456 and 5785092
Decision of the examiner:	Registrations refused
Decision of the Board of Appeal:	Appeals dismissed

Operative part

The Court:

1. Orders that Cases T‑310/09 and T‑383/09 be joined for the purposes of the present judgment;

2. Dismisses the applications;

3. Orders Fuller & Thaler Asset Management, Inc., in Cases T‑310/09 and T‑383/09, to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).