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IP Cases & Commentary – Details

1 June 2011

General Court Behaves Surprisingly!

Fuller & Thaler Asset Management Inc v OHIM
(cases T-310/09 and T-383/09, 12 April 2011)

In a surprising decision, the General Court has upheld the OHIM Board of Appeal’s decision to refuse registration of the trade marks BEHAVIOURAL INDEXING and BEHAVIOURAL INDEX, in respect of computer software for financial asset management and financial asset management services, holding that the marks were descriptive of the goods and services claimed.

The Court found that the trade marks informed the relevant public that the goods/services involved the compilation of an index that took into account human, social and cognitive factors that affected key issues in the financial management of entities and investment decisions concerning matters such as prices, returns and allocation of resources!

The provisions relating to the refusal of trade marks on the basis of descriptive indications have generally been interpreted so as to require a direct and specific relationship between the description and the corresponding goods/services. Where a trade mark is merely suggestive or allusive of the corresponding goods, or the consumer would be required to undergo a prolonged analysis to arrive at the descriptive meaning (as above), the trade mark should not be refused under this provision.

This decision seems entirely at odds with these established principles, hopefully now to be indexed in a 'behaviour not to be followed' category.

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