Judgments nº T-473/08 of Court of First Instance of the European Communities, November 17, 2009

• Resolution Date: November 17, 2009
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-473/08

In Case T‑473/08,

Apollo Group, Inc., established in Phoenix, Arizona (United States), represented by A. Link and A. Jaeger‑Lenz, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

defendant,

ACTION against the decision of the Second Board of Appeal of OHIM of 14 August 2008 (Case R 728/2008-2), concerning an application for registration of the word sign THINKING AHEAD as a Community trade mark,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),

composed of J. Azizi (Rapporteur), President, E. Cremona and S. Frimodt Nielsen, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court of First Instance on 28 October 2008,

having regard to the response lodged at the Court Registry on 23 January 2009,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the Court of First Instance,

gives the following

Judgment

Background to the dispute

1 On 8 March 2007, the applicant, Apollo Group, Inc., filed a Community trade mark application with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 Registration was sought for the word mark THINKING AHEAD.

3 The goods and services for which registration was sought are, inter alia, in Class 41 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for that class, to the following description: ‘Education; providing of training; entertainment; sporting and cultural activities; education services, namely, providing courses of instruction at the post-secondary level’.

4 By decision of 7 March 2008, the examiner refused registration of the trade mark applied for in relation to the services in Class 41 of the Nice Agreement, on the ground, inter alia, that, with regard to those services, that mark was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 (now Article 7(1)(b) of Regulation No 207/2009).

5 On 6 May 2008, the applicant filed an appeal against that decision.

6 By decision of 14 August 2008 (‘the contested decision’), the Second Board of Appeal dismissed the applicant’s appeal and thus confirmed the refusal of registration of the word sign THINKING AHEAD on the basis of Article 7(1)(b) of Regulation No 40/94 in respect of the services in Class 41 of the Nice Agreement.

7 In support of the contested decision, the Board of Appeal held, in essence, that the services at issue are essentially education, entertainment, and sporting and cultural activities and that they are intended for the general public. Having regard to the fact that the word sign at issue constitutes a combination of two English words, the relevant public is that having a sufficient knowledge of English and, at the very least, is composed of average consumers in the United Kingdom, Ireland and Malta. The grammatically correct combination of the words ‘thinking’ and ‘ahead’ has a clear and unambiguous meaning in itself, namely ‘thinking in advance’ or ‘looking to the future’. Having regard to education services, it will be perceived as a slogan which indicates that by embarking on the long and difficult process of learning, consumers are thinking ahead, making steps for their future and investing for it. Thus, the mark applied for is a banal reminder that it is a wise choice to study and take educational courses, probably those provided by the applicant. The mark may be perceived similarly in relation to ‘sporting activities’ where the decision to start, and the pursuit of, such activities means thinking ahead in the interest of one’s future health and well-being (paragraphs 13 to 15 of the contested decision).

8 The Board of Appeal took the view that, in the present case, the criteria laid down by case-law (Case C‑64/02 P OHIM v Erpo Möbelwerk [2004] ECR I‑10031, paragraph 35, and Case T‑122/01 Best Buy Concepts v OHIM (BEST BUY) [2003] ECR II‑2235, paragraphs 20 and 21) for recognising the minimum level of distinctiveness required of a word mark consisting of an advertising slogan are not met. There is nothing about the word sign at issue that enables the relevant public to memorise it otherwise than in its obvious promotional sense (Case T‑130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II‑5179, paragraphs 28 to 30). In the same way, there is nothing unusual in the brevity and grammatically incomplete structure of the slogan concerned. In the world of advertising, short, punchy slogans of that type are often used to facilitate the transmission and memorisation of marketing messages, without that necessarily meaning that consumers will perceive them as an indication of commercial origin. Consequently, the examiner rightly found that the mark applied for is devoid of any distinctive character in relation to ‘education; education services, namely, providing courses of instruction at the post-secondary level; providing of training; sporting activities (paragraphs 16 to 19 of the contested decision)’.

9 Finally, with regard to services of ‘entertainment; cultural activities’, the Board of Appeal held that the mark applied for can be easily viewed as an incitement for the consumer to plan in advance to reserve seats in good time for all kinds of paying cultural activities offered by an entertainment service provider, such as shows, theatre performances or concerts. It can also be perceived merely as a message that ‘thinking ahead’ can save money, uncertainty and the time of queuing up if the consumer purchases ‘in advance’ a yearly museum pass or subscribes for a pay television service on a long-term basis to obtain substantial discounts. Thus, it is a banal reminder to consumers that the ‘early bird catches the worm’ rather than an indication of the commercial origin of the services marketed under the trade mark applied for (paragraph 20 of the contested decision).

10 As regards the previous cases cited by the applicant, where slogans were registered as Community trade marks, the Board of Appeal noted that the vast majority of those marks, with the exception of STEP AHEAD, are not registered in relation to services in Class 41 of the Nice Agreement and...