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.

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).