THINKING AHEAD keine Marke für Vordenker

17. November 2009
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Eigener Leitsatz:

Der Marke THINKING AHEAD fehlt aufgrund ihrer Zusammenstellung und der vom (englischsprachigen) Publikum zugemessenen Bedeutung jegliche Unterscheidungkraft als zuordenbare Kennzeichnung im Bereich von Sport- und Bildungsveranstaltungen. Da die Bedeutung der Worte als allgemeine Aussage bezüglich des generellen Nutzens von physischer und psychischer Weiterbildung verstanden wird, begründen sie keine Markeneintragung.

Europäischer Gerichtshof

Urteil vom 17.11.2009

Az.: T-473/08

JUDGMENT OF THE COURT OF FIRST INSTANCE (Third Chamber)

(Community trade mark – Application for Community word mark THINKING AHEAD – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EC) No 207/2009))

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

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)).

Registration was sought for the word mark THINKING AHEAD.

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’.

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).

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

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.

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).

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)’.

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).

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 are therefore not comparable to the mark applied for. In any event, observance of the principle of equal treatment must be reconciled with observance of the principle of legality (Case T-289/02 Telepharmacy Solutions v OHIM(TELEPHARMACY SOLUTIONS) [2004] ECR II-2851, paragraph 59). Thus, the mere fact that, in other cases relating to other trade marks, a less restrictive approach seems to have prevailed does not amount to a breach of the principle of equality, or to a reason for annulling a decision which per se appears to be reasonable and to be consistent with Regulation No 40/94, as interpreted by the Community judicature (paragraph 24 of the contested decision).

 Forms of order sought by the parties

The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Arguments of the parties

The applicant puts forward a single plea in law, alleging breach of Article 7(1)(b) of Regulation No 40/94.

In support of that plea, the applicant refers, inter alia, to established case-law under which word signs used as slogans, laudatory messages or incitement to purchase goods or services are not a priori non-distinctive. Rather, advertising slogans or messages serving a promotional function may serve as an indication of the commercial origin of the goods or services in question, provided that their promotional function is not primary and does not prevent the public concerned from making assumptions about the origin of those goods or services.

In the present case, the applicant submits, the Board of Appeal failed to take account of the character of the mark applied for, having regard both to the services for which registration was sought and to the perception of the relevant public. In the applicant’s submission, the word sign THINKING AHEAD does not contain any specifically laudatory message with regard to the activities connected with the services in Class 41 of the Nice Agreement and does not invite consumers to take advantage of the services provided by the applicant. The assertion that the sign constitutes a banal reminder that it would be a wise choice to study and take educational courses is incorrect. Although education is important for a professional career, the decision to take courses is also made on the basis of a current special interest or pleasure in learning something new. It is therefore not exclusively future-orientated but also very much related to the present. The word sign THINKING AHEAD is thus not understood by the majority of consumers as a laudatory message promoting the future advantages of the educational services offered by the applicant and nor is it a banal reminder that it is a good choice to make use of those services.

In addition, the applicant disputes the way in which the Board of Appeal interpreted the word sign THINKING AHEAD with respect to sporting activities. Those activities are not in any way related to the future and nor do they require thinking ahead. From the consumers’ point of view, sport is an enjoyable pastime carried out in the interest of present well-being and not on the basis of rational considerations related to the future.

The applicant also rejects the idea that the word sign THINKING AHEAD, with respect to cultural activities, is a banal reminder that the ‘early bird catches the worm’. The assertion that that sign points to the possibility of saving money or obtaining substantial discounts is an interpretation which is not justified by the common understanding of that sign. Moreover, the mark applied for is not intended to protect financial services, so that the offer of financial advantages is not the focus of the applicant’s interest nor that of its potential customers to whom it offers cultural activities.

The applicant concludes that the word sign THINKING AHEAD does not designate – or at least not primarily – the characteristics and qualities of the services concerned in Class 41 of the Nice Agreement. Furthermore, the decision of the relevant public to use or not to use the services offered by the applicant will not be influenced by any information on those qualities allegedly contained in the mark applied for. It is therefore questionable whether the disputed word sign does in fact constitute an advertising slogan or contain any laudatory message. Even if it does serve a promotional function, that is not its primary function in comparison to its function as an indication of the commercial origin of the services at issue. In that regard, the Board of Appeal failed to state any reason for its incorrect assertion that there is nothing about the sign which enables the relevant public to memorise it otherwise than in its promotional sense.

The applicant adds that similar word signs have already been registered as Community trade marks, such as Think ahead!; THINK AHEAD. STAY AHEAD; PLAN AHEAD EVENTS; Step Ahead; PLAN AHEAD; GO AHEAD; GO AHEAD, EXPLORE; be ahead; Charging ahead; MOVING AHEAD – THE AUTOMOTIVE FUTURE; leap ahead; The bank, which thinks ahead; DRINK AHEAD; and AHeAD. Although OHIM is not bound by its previous decisions, the multitude of registrations of such Community trade marks, structured in a similar way to the mark applied for, shows that those word signs are in fact capable of serving as an indication of origin and that they are perceived as such. Those marks do not contain any primarily laudatory message with regard to the goods or services in question which could rule out their registration. In that regard, it is irrelevant that not all of those marks cover services in Class 41 of the Nice Agreement.

In the applicant’s submission, when the word ‘thinking’ is combined with another word, it does not usually have a primarily promotional meaning even when covering services in Class 41 of the Nice Agreement. In this regard, it is appropriate to take account of Community trade mark registrations, such as HEALTHY THINKING; THINKING BEYOND LEARNING; THINKING FROM WITHIN; thinking out louder; PIONEER THINKING; FRESH THINKING; THINKING MOVES; Thinking with your hands and listening with your eyes; THINKING WITHOUT LIMITS; THINK BEYOND; THINKING ADVANTAGE; CLINICALLY THINKING; SMART THINKING; SKINCARE THINKING FOR HAIR; THE THINKING BEHIND THE MONEY; VISIONARY THINKING; Leading / Thinking / Performing; and STRUCTUREDThinking. Like the Community trade marks containing ‘ahead’, these marks show that word signs which are similar or almost identical to the mark applied for are obviously distinctive. Given the high number of such registrations, the Board of Appeal cannot merely find that the mark applied for is devoid of any distinctive character and cannot serve as an indication of origin, but must give specific reasons to justify the alleged non-registrability of the disputed word sign as a Community trade mark, where similar word signs have been registered in numerous cases.

In addition, the applicant submits that the trade mark registration practice in the United Kingdom contradicts the argument of the Board of Appeal that average consumers in that country immediately perceive the word sign THINKING AHEAD as having a promotional meaning. In fact there is a multitude of trade mark registrations in the United Kingdom, including ones for services in Class 41 of the Nice Agreement, which are highly similar to the mark applied for, such as LOOK AHEAD; GO AHEAD; GET AHEAD; JUMP AHEAD; STEP AHEAD; STRIDE AHEAD; GO AHEAD! YOGURT BREAKS; GO AHEAD! FRUIT TOPS; and TALK AHEAD. Without prejudice to the question whether OHIM is bound by decisions of the national trade mark authorities, the perception of the public concerned in a Member State is the same irrespective of whether it relates to a national or a Community trade mark. Given that, from the point of view of consumers living in the United Kingdom, compound word signs similar to the disputed word sign are distinctive, as shown by the numerous registrations in that country, the Board of Appeal cannot justify its refusal to register that sign on the ground that it will be understood by those consumers, principally, as a laudatory message rather than as an indication of origin. That assessment is confirmed by the practice of registration of marks identical to the mark applied for in the United States and Canada, where the relevant public is also English-speaking.

The applicant concludes from this, essentially, that, in connection with the services in Class 41 of the Nice Agreement, the interpretation of the word sign THINKING AHEAD is arbitrary. Even if the sign could be considered an advertising slogan, the advertising or laudatory message is merely secondary and does not take precedence over its ability to serve as an indication of origin.

OHIM contests the arguments put forward by the applicant and contends that the present action should be dismissed on the grounds set out in the contested decision.

 Findings of the Court

Under Article 7(1)(b) of Regulation No 40/94, ‘trade marks which are devoid of any distinctive character’ are not to be registered. In addition, Article 7(2) of that regulation (now Article 7(2) of Regulation No 207/2009), states that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.

The concept of general interest underlying Article 7(1)(b) of Regulation No 40/94 is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (see, to that effect, Case C-304/06 P Eurohypo v OHIM [2008] ECR I-3297, paragraph 56, and the case-law there cited).

Thus, for a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-5089, paragraph 34). It is not necessary for that purpose for the mark to convey exact information about the identity of the manufacturer of the product or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different commercial origin and to conclude that all the products or services that it designates have been manufactured, marketed or supplied under the control of the proprietor of the mark and that the proprietor is responsible for their quality (see judgment of 10 October 2008 in Joined Cases T-387/06 to T-390/06 Inter-IKEA v OHIM (Representation of a pallet), not published in the ECR, paragraph 27, and the case-law there cited).

However, signs which do not enable the public concerned to repeat a purchasing experience, if it was positive, or to avoid it, if it was negative, when making a later purchase of the goods or services in question, are devoid of any distinctive character for the purposes of Article 7(1)(b). Such is the case, in particular, of signs which are commonly used for the marketing of the goods or services concerned. Those signs are deemed incapable of performing the essential function of a mark, that is to say, identification of the origin of the product or service in question (see, to that effect, judgment of 12 March 2008 in Case T-341/06 Compagnie générale de diététique v OHIM (GARUM), not published in the ECR, paragraph 29, and the case-law there cited).

Finally, the distinctive character of a mark must be assessed, first, in relation to the goods or services for which registration of the sign has been applied for and, second, in relation to the perception of the relevant public, which is reasonably well informed and reasonably observant and circumspect (Representation of a pallet, paragraph 26 above, paragraph 28, and the case-law there cited).

Firstly, with regard to the determination of the relevant public, which is not disputed in the present case, it must be noted that the services in Class 41 of the Nice Agreement, in respect of which registration of the word sign THINKING AHEAD has been applied for, constitute mass-market services. Given that the word sign is composed of two words from the English language and that use of that language is widespread in the areas of education, training, culture, entertainment and sport, which cover the services at issue, the Board of Appeal rightly took into account average consumers who are English-speaking or have an elementary knowledge of the English language who, in any event, represent a very large part of the relevant European public.

Next, it must be considered whether the Board of Appeal correctly analysed the meaning of the mark applied for with regard to both its constituent elements and as a whole, from the point of view of the relevant public, to reach the conclusion that the mark was devoid of any distinctive character with regard to the services at issue.

As laid down in case-law, in the case of compound word signs the relevant meaning, established on the basis of all the constituent elements of those signs and not only one of them, must be taken into account (Case T-28/06 RheinfelsQuellen H. Hövelmann v OHIM (VOM URSPRUNG HER VOLLKOMMEN) [2007] ECR II-4413, paragraph 32). Thus, the assessment of the distinctive character of such signs cannot be limited to an evaluation of each of their words or components, considered in isolation, but must, on any view, be based on the overall perception of those marks by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, have a distinctive character. The mere fact that each of those elements, considered separately, is devoid of any distinctive character does not mean that their combination cannot present such character (Eurohypo v OHIM, paragraph 25 above, paragraph 41). In other words, in order to assess whether or not a trade mark is devoid of any distinctive character, the overall impression given by it must be considered, which may however mean first examining, in that overall assessment, each of the individual components of which that mark is composed (see, to that effect, Case C-238/06 P Develey v OHIM [2007] ECR I-9375, paragraph 82).

Even though the assessment of the Board of Appeal may appear succinct with regard to the perception which the English-speaking average consumer may have of the word sign THINKING AHEAD as regards its different elements and the sign as a whole, the fact remains that the semantic content of each of the two words which comprise the sign, that is to say, ‘thinking’ and ‘ahead’, is sufficiently clear and precise and is not likely to undergo a noticeable change when they are combined into a single sign. As the Board of Appeal held, the combination of those words – which is unexceptional in colloquial English and grammatically correct – into the expression ‘thinking ahead’ conveys a clear and unambiguous meaning, namely, that of ‘thinking in advance’, which does not go beyond the meaning of its two constituent elements. Furthermore, it follows that, as OHIM has rightly pointed out, because of its structure and its meaning, the disputed word sign does not contain any fancy elements and cannot provoke an effect of surprise on the part of the relevant public.

Moreover, the Board of Appeal was justified in considering that the word sign THINKING AHEAD, because of its strong evocation of the future, is likely to be perceived by English-speaking average consumers, whose level of attention is relatively low when it comes to promotional indications (see, to that effect, Case T-320/03 Citicorp v OHIM(LIVE RICHLY) [2005] ECR II-3411, paragraph 74), as an advertising slogan of the type ‘the early bird catches the worm’ referring to the services in respect of which registration has been sought, even if those services do not necessarily meet the consumers’ future need but also their immediate need. Accordingly the main argument put forward by the applicant, that the services at issue meet a demand more present than future, is not decisive.

Thus, in connection with educational and training services, the disputed word sign is necessarily regarded as a reminder to potential consumers of such services to enrol on courses, to take part in them and to study with the aim, inter alia, of improving their career opportunities or their social position. Contrary to the applicant’s submissions, the expression ‘thinking ahead’, because of its clear and specific meaning, namely, ‘thinking to the future’, when it is used in connection with those services, leads consumers to associate it with their personal future development, even though it is true that educational and training services are also intended to meet a current and immediate need.

The Board of Appeal was also justified in taking the view that, in the light of the strong evocation of the future in the expression ‘thinking ahead’, those considerations apply mutatis mutandis to services connected with sporting activities. Although the practice of sport meets the relevant public’s immediate need for physical exercise and relaxation, the fact remains that the disputed word sign, when it is used in that context to designate certain services in that area, such as those offered in a sports centre, automatically evokes the future and the more long-term effects of the sporting activity in question, such as positive effects on the health and well-being of the person concerned.

In the same way, with regard to services related to entertainment and culture in the broad sense, the disputed word sign is likely to convey the message that it is sensible to prepare sufficiently in advance to attend sporting, artistic or cultural events of all kinds, for which demand often exceeds supply in terms of places available. Thus, the Board of Appeal could reasonably take the view that the mark applied for could be perceived as containing an incitement for the relevant public to reserve seats or tickets in advance for all kinds of paying cultural activities, such as shows, theatre performances or concerts, visits to a museum or exhibition, or to buy an annual pass or subscription in good time in order thus to avoid uncertainty or queues and to save money. The applicant has not succeeded in calling into question the finding that the disputed word sign strongly evokes the future in relation to cultural or entertainment services.

It follows from the foregoing considerations that, from the point of view of the relevant public, the word sign THINKING AHEAD constitutes, because of its inherent meaning which evokes the future, a principally promotional message in relation to the services concerned in Class 41 of the Nice Agreement. It is therefore likely commonly to be used to market those services and is deemed incapable of performing the essential function of a mark, that is to say, that of identifying their origin (see the case-law cited in paragraph 27 above).

The applicant has neither shown nor argued that that sign contains elements which, over and above its obvious promotional meaning, could enable the relevant public easily and immediately to memorise it as a distinctive mark for the services covered. Since the relevant public is not very attentive if a sign does not immediately indicate to it the origin and/or intended use of the product or service which it intends to purchase, but just gives it purely promotional, abstract information, it will not take the time either to enquire into the expression’s various possible functions or mentally to register it as a trade mark (REAL PEOPLE, REAL SOLUTIONS, paragraph 8 above, paragraph 29). In those circumstances, the applicant’s attempt to contest the mainly laudatory nature, as an advertising slogan, of the expression ‘thinking ahead’ and to complain that the Board of Appeal did not give sufficient reasons for which that expression was incapable of indicating commercial origin cannot succeed.

Accordingly, the Board of Appeal rightly concluded that that expression will be perceived by the relevant public primarily as a promotional slogan rather than as a trade mark.

Finally, the applicant’s arguments that the approach of the Board of Appeal is inconsistent with the earlier registration of a number of similar word signs as Community or national trade marks must also be rejected.

Without prejudice to the question of whether or not registration of those other marks related to the same services in Class 41 of the Nice Agreement as those in respect of which registration of the word sign THINKING AHEAD has been applied for, it has been accepted in established case-law that the decisions which the Boards of Appeal are called upon to take concerning registration of signs as Community trade marks, under Regulation No 40/94, are based on circumscribed powers and not on discretionary powers. Accordingly, the lawfulness of decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of an earlier decision-making practice of the Boards (see orders of 13 February 2008 in Case C-212/07 P Indorata-Serviços e Gestão v OHIM, not published in the ECR, paragraph 43, and of 15 February 2008 in Case C-243/07 P Brinkmann v OHIM, not published in the ECR, paragraph 39, and the case-law there cited).

In addition, compliance with the principle of equal treatment with regard to registration of trade marks must be reconciled with compliance with the principle of legality, according to which no person may rely, in support of his claim, on an unlawful act committed in favour of another (Case 134/84 Williams v Court of Auditors [1985] ECR 2225, paragraph 14; see also, to that effect, Case 188/83 Witte v European Parliament [1984] ECR 3465, paragraph 15). It is clear from established case-law that if, in an earlier case, one of OHIM’s Boards of Appeal erred in law in accepting the registrability of a sign as a Community trade mark, no general principle of Community law precludes the adoption, in a later case comparable to the previous one, of a contrary decision (see, to that effect, Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 67; judgment of 30 November 2006 in Case T-43/05 Camper v OHIM – JC (BROTHERS by CAMPER), not published in the ECR, paragraph 95; and Case T-304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II-1927, paragraphs 65 to 67). Conversely, since the applicant seeks to argue that, in the present case, the Board of Appeal should have taken the same position as that adopted by OHIM in earlier, allegedly similar, cases with regard to the registrability of a sign as a Community trade mark, that argument cannot succeed (see, to that effect, STREAMSERVE, paragraph 67, and Mozart, paragraph 69), unless the applicant shows that the Board of Appeal has made an error liable to give rise to annulment of the contested decision. As is apparent from the considerations set out in paragraphs 29 to 39 above, that is not the case here.

With regard to the applicant’s argument based on the practice of national authorities in registering trade marks, it is sufficient to note that the Community trade mark system is autonomous and that the legality of decisions of the Boards of Appeal is to be assessed purely by reference to Regulation No 40/94, so that OHIM is neither bound by national registrations (see, to that effect, REAL PEOPLE, REAL SOLUTIONS, paragraph 8 above, paragraph 31), nor required to come to the same conclusions as those arrived at by national authorities in similar circumstances (see, to that effect, Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-551, paragraph 49).

Consequently, the applicant’s arguments based on the earlier, possibly contrary, practice of OHIM and national authorities cannot be accepted.

In those circumstances, the Board of Appeal was justified in refusing, on the basis of Article 7(1)(b) of Regulation No 40/94, registration of the trade mark applied for.

Accordingly, the action must be dismissed.

 Costs

Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE COURT OF FIRST INSTANCE (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Apollo Group, Inc. to pay the costs.

Azizi
    

Cremona
    

Frimodt Nielsen

Delivered in open court in Luxembourg on 17 November 2009.

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