THINKING AHEAD held to lack distinctiveness for education services

European Union

In Apollo Group Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-473/08, November 17 2009), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had refused to register the trademark THINKING AHEAD.

Apollo Group Inc, a provider of higher education programmes, filed an application for the registration of the word mark THINKING AHEAD as a Community trademark (CTM) for, among other things, services in Class 41 of the Nice Classification ("education; providing of training; entertainment; sporting and cultural activities; education services, namely, providing courses of instruction at the post-secondary level").

Both the OHIM examiner and the Second Board of Appeal refused registration of the mark on the grounds, among others, that the mark lacked distinctive character with regard to the services in Class 41 within the meaning of Article 7(1)(b) of the Community Trademark Regulation (40/94) (now Article 7(1)(b) of Regulation 207/2009). Apollo appealed to the CFI.

Before the CFI, Apollo argued that the interpretation of the THINKING AHEAD mark was arbitrary. Even if the mark could be considered as an advertising slogan, the advertising or laudatory message was merely secondary and did not take precedence over the mark's ability to serve as an indication of origin. Apollo further claimed that the THINKING AHEAD mark would not be understood by the majority of consumers as a laudatory message promoting the future advantages of the educational services offered by it. Similarly, it would not be seen as a "banal reminder that it is a wise choice" to take educational courses. Finally, Apollo argued that similar word marks had already been registered as CTMs and that there were numerous registrations for similar marks in the United Kingdom. Therefore, the board should have given specific reasons to justify the alleged non-registrability of the THINKING AHEAD mark, since several similar marks had already been registered.

The CFI first pointed out that the essential function of a trademark is to identify the origin of the goods or services in question. Marks that do not enable the public concerned to repeat a purchasing experience if it was positive, or to avoid it if it was negative, are devoid of distinctive character under Article 7(1)(b).

The CFI then stated that the relevant public in the present case consisted of "average consumers who were English-speaking or had an elementary knowledge of the English language".

The CFI further held that the assessment of the distinctive character of compound word signs must be based on an overall perception of those marks by the relevant public. The expression 'thinking ahead' conveyed a clear and unambiguous meaning - 'thinking in advance' - which did not go beyond the meaning of its two constituent elements. Accordingly, when used in connection with services in Class 41, the expression would lead consumers to associate it with their personal future development.

Since Apollo had neither showed nor argued that the mark contained elements which could enable the relevant public easily and immediately to memorize it as a distinctive mark for the services concerned, the expression 'thinking ahead' would be perceived by consumers as a promotional slogan, rather than as a trademark. Therefore, the THINKING AHEAD mark constituted a principally promotional message in relation to the services in Class 41 and was incapable of identifying their origin.

Finally, the CFI dismissed Apollo's equal treatment argument, holding that the lawfulness of decisions of the boards of appeals must be assessed on the basis of the regulation, and not on the basis of earlier decision-making practice of the boards. The CFI reiterated that OHIM is not bound by national registrations and is not required to come to the same conclusions as those arrived at by the national authorities.

The action was thus dismissed.

Nina Ringen, Plesner, Copenhagen

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