Judgment — ECLI:EU:T:2011:157
Date: 2011-04-12
Language of the case: English
Court formation: Fourth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded

Action brought on 4 August 2009 - Fuller & Thaler Asset Management v OHIM (BEHAVIOURAL INDEXING) (Case T-310/09) Language of the case: English Parties Applicant(s): Fuller & Thaler Asset Management, Inc. (San Mateo, United States) (represented by S. Malynicz, Barrister) Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs) Form of order sought Annul the decision of the Grand Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 28 April 2009 in case R 323/2008-G; and Order the defendant to pay its own costs and those of the applicant Pleas in law and main arguments Community trade mark concerned: The word mark "BEHAVIOURAL INDEXING" for goods and services in classes 9 and 36 Decision of the examiner: Refused the application for a Community trade mark Decision of the Board of Appeal: Dismissed the appeal Pleas in law: Infringement of Article 7(1)(c) of Council Regulation 207/2009 as the Board of Appeal (i) erred in relation to the meaning and syntax of the mark, as well as its aptness or otherwise as an immediate and direct descriptive term for the goods and services in question; (ii) failed to establish facts of its own motion that would show that the Community trade mark concerned was descriptive to the relevant public, even though it correctly concluded that the relevant public was specialised; and (iii) failed to take account of the public interest that underlies this ground for refusal and failed to establish on the evidence that there was, in the relevant specialised sphere, a reasonable likelihood that other traders in that sphere would wish to use the Community trade mark concerned in the future. ____________