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Cite as: [2011] EUECJ T-310/09, [2011] EUECJ T-310/9

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JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

12 April 2011(*)

(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)

In Cases T-310/09 and T-383/09,

Fuller & Thaler Asset Management, Inc., established in San Mateo (United States), represented by S. Malynicz, Barrister,

applicant,

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

defendant,

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,

THE GENERAL COURT (Fourth Chamber),

composed of I. Pelikánová, President, K. Jürimäe (Rapporteur) and M. van der Woude, Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the applications lodged at the Court Registry on 4 August (Case T-310/09) and 28 September 2009 (Case T-383/09),

having regard to the responses lodged at the Court Registry on 27 November (Case T-310/09) and 7 December 2009 (Case T-383/09),

having regard to the order of 20 October 2010 joining Cases T-310/09 and T-383/09 for the purposes of the oral procedure,

having regard to OHIM’s answer of 25 October 2010 to the Court’s question of 22 October 2010,

further to the hearing on 30 November 2010,

gives the following

Judgment

Background to the dispute

1 On 26 March 2007, the applicant, Fuller & Thaler Asset Management Inc., filed two applications for registration of Community trade marks at 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 The trade marks in respect of which registration was sought are the word signs BEHAVIOURAL INDEXING and BEHAVIOURAL INDEX.

3 The goods and services for which registration of the trade marks was sought are in Classes 9 and 36 within the meaning of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond in respect of each of those classes to the following description:

– Class 9: ‘Computer software for financial asset management, financial management, financial portfolio management, investment management, and fund management; computer software for the management and administration of index-based portfolios of securities and mutual funds portfolio management’;

– Class 36: ‘Providing financial asset management, financial management, financial portfolio management, investment management, and fund management; providing index-based portfolio of securities and mutual funds portfolio management’.

4 With regard to the sign BEHAVIOURAL INDEXING, the examiner refused registration as a Community trade mark, by decision of 29 August 2007, for all the goods and services listed in the preceding paragraph, on the basis of Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 7(1)(b) and (c) of Regulation No 207/2009). By letter of 29 October 2007, the applicant requested the withdrawal of the examiner’s decision of 29 August 2007. In that letter it acknowledged that the goods and services in question related to an index of information and emphasised the fact that the data was gathered ‘by reviewing and evaluating the actions of investors in the marketplace and using cognitive errors (mental mistakes) made by investors because of their behavioural biases’. Lastly, in that letter, the applicant filed a notice of appeal at OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the examiner’s decision of 29 August 2007.

5 By decision of 28 April 2009 (‘the first contested decision’), the Grand Board of Appeal of OHIM dismissed the appeal.

6 With regard to the sign BEHAVIOURAL INDEX, the applicant, by letter of 2 November 2007 addressed to OHIM, acknowledged that the goods and services in question related to an index of information and emphasised the fact that the data was gathered ‘by reviewing and evaluating the actions of investors in the marketplace and using … cognitive errors (mental mistakes) made by investors because of the investors’ behavioural biases’. By decision of 25 November 2008, the examiner refused to register that sign as a Community trade mark for all the goods and services listed in paragraph 3 above, on the basis of Article 7(1)(b) and (c) of Regulation No 40/94.

7 On 23 January 2009, the applicant filed a notice of appeal at OHIM under Articles 57 to 62 of Regulation No 40/94 against the examiner’s decision of 25 November 2008.

8 By decision of 11 June 2009 (‘the second contested decision’), the First Board of Appeal of OHIM dismissed the appeal.

9 In the first contested decision, the Grand Board of Appeal held that the relevant public was a specialised public, that the term ‘indexing’ was descriptive of the goods and services in question and that the term ‘behavioural’ also had a meaning in the sector concerned. It also held that the linking of those two terms was a grammatically correct structure with a meaning that was descriptive of the goods and services in question. It inferred from this that the mark applied for, as a whole, constituted an immediate, direct and easily understandable indication of the nature and intended purpose of the goods and services in question. Lastly, it observed that it was irrelevant that only the applicant markets a proprietary system for analysing and anticipating the performance of financial markets under the mark applied for.

10 In the second contested decision, the First Board of Appeal held that the relevant public was an English-speaking public whose level of attention was high, that the term ‘index’ was descriptive of the goods and services in question and that the term ‘behavioural’ also had a meaning in the sector concerned. It also stated that it was reasonable to assume that an index capable of explaining, interpreting or even predicting the conduct of financial operators would constitute a valuable asset. Moreover, it considered that the linking of the terms ‘behavioural’ and ‘index’ was a grammatically correct structure which was intellectually meaningful and was descriptive of the goods and services in question. According to the Board, the fact that the word ‘behaviour’ was capable of several interpretations was irrelevant since the term ‘behavioural’ in combination with the term ‘index’ had a clear meaning that related to the goods and services concerned. It inferred from this, first, that the mark applied for, as a whole, constituted an immediate, direct and easily understandable indication of the nature and intended purpose of the goods and services in question and that it did not create an impression which was sufficiently far removed from that produced by the mere combination of the meanings lent by the elements of which it was composed and, second, given the high degree of awareness of the relevant public, the sign at issue would immediately and without second thought be understood as a direct and obvious reference to the process of compiling the index.

Forms of order sought

11 In Case T-310/09, the applicant claims that the Court should:

– annul the first contested decision;

– order OHIM to pay the costs.

12 In Case T-383/09, the applicant claims that the Court should:

– annul the second contested decision;

– order OHIM to pay the costs.

13 In both Case T-310/09 and Case T-383/09, OHIM contends that the Court should:

– dismiss the application;

– order the applicant to pay the costs.

Law

14 After hearing the parties on this point, the Court considers it appropriate to join the present cases for the purposes of the judgment, in accordance with Article 50 of its Rules of Procedure.

Arguments of the parties

15 In support of each of its actions, the applicant submits a single plea in law alleging infringement of Article 7(1)(c) of Regulation No 207/2009. That single plea is divided into three parts.

16 First, the applicant claims that OHIM incorrectly assessed the meaning of the word signs at issue, those signs’ compliance with the syntax of the English language, and the aptness of those signs to constitute an immediate and directly descriptive indication of the goods and services in question. In essence, it maintains that the juxtaposition of the terms ‘behavioural’ and ‘indexing’, on the one hand, and ‘behavioural’ and ‘index’, on the other hand, results in a whole which, from the point of view of the relevant public, is not a familiar expression in the relevant language or sector in this case. That juxtaposition conjures up connotations that are novel or imaginative in the sphere of software and finance. Moreover, the term ‘behavioural’ is in itself ‘an unexpected word’ in the context of the goods or services in question.

17 Secondly, the applicant claims that there is no evidence in either the first contested decision or the second contested decision to establish the descriptiveness of the trade marks applied for for the relevant public. In any event, OHIM failed to provide sufficient reasons in those decisions with regard to the descriptiveness of the trade marks applied for.

18 Thirdly, the applicant disputes the validity of OHIM’s refusal to interpret the ground for refusal of registration under Article 7(1)(c) in the light of the public interest underlying that provision.

19 OHIM disputes the merits of the applicant’s arguments.

Findings of the Court

20 Article 7(1)(c) of Regulation No 207/2009 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered.

21 According to settled case-law, the various grounds for refusal of registration listed in Article 7(1) of Regulation No 207/2009 should be interpreted in the light of the public interest underlying each of them (see Case C-273/05 P OHIM v Celltech [2007] ECR I-2883, paragraph 74 and the case-law cited).

22 Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, namely that signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-551, paragraph 62 and the case-law cited).

23 If a mark which consists of a sign produced by a combination of elements is to be regarded as descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of its components may be found to be descriptive. All the elements must be found to be so (see, by analogy, with regard to Article 3(1)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), a provision which is identical in essence to Article 7(1)(c) of Regulation No 207/2009 (Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 96, and Case C-265/00 Campina Melkunie [2004] ECR I-1699, paragraph 37)).

24 In that regard, it is apparent from the case-law of the Court of Justice that although, as a general rule, the mere combination of elements, each of which is descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009, remains itself descriptive of characteristics of the goods or services in respect of which registration is sought, it is possible for such a combination not to be descriptive for the purposes of that provision, provided that it creates an impression which is sufficiently far removed from that produced by the simple combination of those elements (Koninklijke KPN Nederland, paragraph 23 above, paragraphs 98 and 99, and Campina Melkunie, paragraph 23 above, paragraphs 39 and 40).

25 Therefore, although, as regards a trade mark made up of words, any descriptive character may be assessed, in part, in respect of each of its elements, taken separately, that character must, in any event, depend on an appraisal of the whole which they comprise (see, by analogy, Case C-329/02 P SAT.1 v OHIM [2004] ECR I-8317, paragraph 28, and Case C-37/03 P BioID v OHIM [2005] ECR I-7975, paragraph 29).

26 Although it follows from the foregoing that Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, the fact remains that application of that provision does not depend on there being a real, current and serious need to leave a sign or indication free for the benefit of third parties (see, to that effect, Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 39; see also, by analogy, Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 35).

27 Thus, for OHIM to refuse registration on the basis of Article 7(1)(c) of Regulation No 207/2009, it is sufficient, as the very wording of that provision indicates, that such signs and indications could be used for purposes that are descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. A word sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (Case C-191/01 P OHIM v Wrigley [2003] ECR I-12447, paragraph 32).

28 Consequently, it is necessary only to consider, on the basis of the relevant meaning of the trade mark applied for, whether there is a relationship which is sufficiently direct and specific to enable the relevant public immediately to perceive, without further thought, a description of the goods or services in question or one of their characteristics (STREAMSERVE, paragraph 26 above, paragraph 40, and Case T-207/06 Europig v OHIM (EUROPIG) [2007] ECR II-1961, paragraph 27).

29 Moreover, according to case-law, under Article 76(1) of Regulation No 207/2009, OHIM examiners and, on appeal, the Boards of Appeal of OHIM are required to examine the facts of their own motion in order to determine whether the mark applied for falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of OHIM may be led to base their decisions on facts which have not been put forward by the applicant for the mark (Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 50).

30 Secondly, whilst it is in principle the task of those bodies to establish in their decisions the accuracy of such facts, that is not the case where they rely on facts which are well known (Storck v OHIM, paragraph 29 above, paragraph 51), that is to say, facts which are likely to be known by anyone or which may be learnt from generally accessible sources (Case T-185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-1739, paragraph 29). In that regard, it must be noted that an applicant for a trade mark against whom the competent bodies of OHIM rely on such well-known facts may challenge the accuracy of those facts before the General Court (Storck v OHIM, paragraph 29 above, paragraph 52).

31 In the present case, it should be observed at the outset that a number of relevant facts are not disputed by the parties, namely, that:

– as the Grand Board of Appeal and the First Board of Appeal noted, the relevant public is composed of investors, business operators, financial institutions or other undertakings, and therefore that public has a high level of attention;

– the relevant public is an English-speaking public;

– in the financial sector, to which the goods and services in question relate, the relevant public understands the term ‘indexing’ as meaning the action or process of compiling an index and the term ‘index’ as meaning an index-based tool, and those terms are descriptive of the goods and services concerned in that they are specifically described as relating to an index of information.

32 Thus, the main question which arises in this case is in essence, whether, in the perception of the relevant public, the expressions ‘behavioural indexing’ and ‘behavioural index’, each taken as a whole, are descriptive in relation to the services and goods concerned, for the purposes of Article 7(1)(c) of Regulation No 207/2009.

33 In that regard, it must be held that the fact that the relevant public is composed of investors, business operators, financial institutions or other undertakings and that therefore that public has a high level of attention does not mean that it can be described as a public of specialists. As OHIM contended at the hearing, since the Grand Board of Appeal and the First Board of Appeal held, rightly, that the relevant public was composed in particular of investors, that is to say, persons who may have a certain knowledge of the markets, without however being professionals in the financial sector, that relevant public, whilst having a high level of attention, was not merely a specialised public.

First part of the single plea raised in each of the two actions: error in the assessment of the meaning of the word signs at issue, of those signs’ compliance with the syntax of the English language, and of the aptness of those signs to constitute an immediate and directly descriptive indication of the goods and services in question

34 It should be noted that, in English, the adjective ‘behavioural’ is used to denote or refer to an analysis of objective behaviour, particularly that of human beings. Moreover, as the Grand Board of Appeal observed in paragraph 39 of the first contested decision and the First Board of Appeal observed in paragraphs 16 and 17 of the second contested decision, such a psychological analysis of human, social and cognitive factors may be carried out in the financial sector with a view to understanding, explaining, interpreting or predicting decisions made by consumers, borrowers, managers or investors, which affect stock market prices, returns and the allocation of resources.

35 Thus, generally, it must be held, contrary to what the applicant maintains, that even if behavioural analysis falls within the social sciences, it is applied inter alia in the financial sector, where human, social and cognitive factors may influence decisions taken by consumers, borrowers, managers or investors.

36 Consequently, the applicant is wrong to argue that the term ‘behavioural’ is unexpected in the context of the goods and services in question. That adjective may be used in all the sectors in which behavioural analysis is applied. That is all the more so where, as in the present case, and this is not disputed by the applicant, one of the features of the sector concerned, the financial sector, is its direct exposure to the behaviour of the players in that sector.

37 Furthermore, regarding the applicant’s assertion that the Grand Board of Appeal and the First Board of Appeal considered the terms ‘behaviour’ and ‘behavioural’ to be interchangeable, this is factually incorrect. It is not apparent either from the first contested decision or from the second contested decision that the Boards of Appeal considered those words to be interchangeable.

38 Hence, the Grand Board of Appeal and the First Board of Appeal were fully entitled to hold that, as regards the goods and services in question, the term ‘behavioural’, in so far as it refers to human, social and cognitive factors, is meaningful in the financial sector.

39 Furthermore, in the light of the case-law cited in paragraphs 24 and 25 above, it is appropriate to assess whether the expressions ‘behavioural indexing’ and ‘behavioural index’, as a whole, are descriptive of the goods and services in question.

40 In that regard it is appropriate to consider whether, as the applicant claims, the juxtaposition of the terms ‘behavioural’ and ‘indexing’, on the one hand, and of the terms ‘behavioural’ and ‘index’, on the other hand, conjures up connotations that are novel or imaginative in the sphere of software and finance.

41 First of all, as can be seen from paragraphs 34 to 38 above as regards the term ‘behavioural’ and as the applicant acknowledges as regards the terms ‘indexing’ and ‘index’, those three terms taken separately are fully understandable by the relevant public.

42 Next, it should be noted that the terms ‘behavioural’, ‘indexing’ and ‘index’, taken separately, are descriptive of the goods and services in question. As regards the term ‘behavioural’, since the behaviour of players in the financial sector has a direct influence on the price of stock, the behavioural dimension to which that term refers is necessarily taken into account in the context of the software and services for managing such stock. As for the terms ‘indexing’ and ‘index’, as was stated in paragraph 31 above, they relate to an index of information, a fact which the applicant does not dispute.

43 Moreover, in English, from the point of view of both the grammar and the syntax of the English language, the juxtaposition of the words ‘behavioural’ and ‘indexing’, on the one hand, and ‘behavioural’ and ‘index’, on the other hand, is perfectly correct. Hence, since ‘behavioural’ is an adjective, it has a close link with the nouns which it qualifies, namely, in this case, the words ‘indexing’ and ‘index’.

44 The Grand Board of Appeal and the First Board of Appeal were therefore fully entitled to hold that the expressions ‘behavioural indexing’ and ‘behavioural index’, each as a whole, plainly informed the relevant public of the fact that the goods and services in question related to the compilation of an index that takes into account human, social and cognitive factors that affect key issues in the financial management of entities and investment decisions concerning matters such as prices, returns and allocation of resources.

45 In those circumstances, the applicant is wrong to claim that that juxtaposition is novel and imaginative in the sphere of software and finance, so that it is unexpected.

46 The first part of the single plea raised in each of the two actions must therefore be rejected as unfounded.

The second part of the single plea raised in each of the two actions: the lack of evidence in the first contested decision and in the second contested decision to establish the descriptiveness of the trade marks applied for for the relevant public

47 As a preliminary point, it must be held that two of the applicant’s assertions are manifestly incorrect.

48 First, the applicant is wrong to claim that the definition of the relevant public as a specialised public placed ‘certain procedural obligations’ on OHIM. Besides the fact that, as was stated in paragraph 33 above, the relevant public is not merely a specialised public, in any event the purpose of the definition of the relevant public is to determine the level of attention of that public. That definition does not therefore lead to the alteration of ‘certain procedural obligations’ which are binding on OHIM, in particular, as regards the burden of proof placed on it.

49 Second, the applicant is also wrong to claim that, under Article 76(1) of Regulation No 207/2009, OHIM is required to examine of its own motion the facts other than those which are well known in order to determine whether the marks applied for fall under one of the absolute grounds for refusal. It is clear, both from the provisions of that article and from the settled case-law cited in paragraph 29 above, that OHIM is required to examine of its own motion the relevant facts which might lead it to apply an absolute ground for refusal. Hence, that binding obligation on OHIM relates to any relevant fact, including one which is well known.

50 Primarily, in the first place, it is appropriate to note, as is clear from the case-law cited in paragraph 30 above, which the applicant cites itself in each of its applications, that OHIM is not required to establish the accuracy of facts which it considers to be well known.

51 In the second place, it should be borne in mind that the General Court has already decided that the Boards of Appeal must be able to base their decisions on arguments not presented before the examiner provided that the party concerned has been able to comment on the matters affecting the application of the legal provision in question. In accordance with the principle of the continuity in terms of their functions between the examiner and the Boards of Appeal, the latter may re-examine the trade mark application without being limited by the examiner’s reasoning (Case T-122/99 Procter & Gamble v OHIM (Soap bar shape) [2000] ECR II-265, paragraph 27, and Case T-198/00 Hershey Foods v OHIM (Kiss Device with plume) [2002] ECR II-2567, paragraph 25).

52 Lastly, first, it should be borne in mind that the parties are agreed that the relevant public is an English-speaking public with a high level of attention. Moreover, it is not disputed by the applicant that neither the Grand Board of Appeal nor the First Board of Appeal based its decision on new evidence not taken into account by the examiner. At most, the applicant criticises the Boards of Appeal for relying on a single piece of evidence accepted by the examiner without, however, referring to the results of his internet searches. Such a criticism cannot succeed, in the light of the case-law cited in paragraph 51 above.

53 Second, it should be noted, as the Grand Board of Appeal held in paragraph 40 of the first contested decision, and the First Board of Appeal held in paragraph 18 of the second contested decision, that the expressions ‘behavioural indexing’ and ‘behavioural index’ plainly inform the relevant public that the goods and services in question concern the compilation of an index that takes into account human, social and cognitive factors.

54 Third, both the Grand Board of Appeal, in paragraph 41 of the first contested decision, and the First Board of Appeal, in paragraph 19 of the second contested decision, held that the marks applied for, as a whole, gave an immediate, direct and easily understandable indication of the nature and intended purpose of the goods and services in question. The trade marks applied for will therefore immediately and without further thought be understood as a direct and obvious reference to those goods and services. Thus, both the Grand Board of Appeal and the First Board of Appeal indicated, in essence, that the facts on which they based their decisions were well known.

55 Therefore, as OHIM contends in each of its responses, it can be seen from the first contested decision and the second contested decision, first, that both the Grand Board of Appeal and the First Board of Appeal held that the importance of behavioural factors is well known to the relevant public on the financial and stock markets and, second, that those Boards amply substantiated that finding.

56 Hence, since the facts thus rightly found by the Grand Board of Appeal and the First Board of Appeal are well known, and those Boards cannot be criticised for not themselves referring to the evidence accepted by the examiner, the applicant is wrong to claim that OHIM did not establish the accuracy of those facts.

57 Lastly, fourth, with regard to the alleged infringement by the Grand Board of Appeal and by the First Board of Appeal of the obligation to state the reasons for their decisions, as regards the descriptiveness of the marks applied for, it must be borne in mind that that obligation has two purposes: to allow interested parties to know the justification for the measure adopted so as to enable them to protect their rights, and to enable the Courts of the European Union to exercise their power to review the legality of the decisions of OHIM (see, by analogy, Case T-129/04 Develey v OHIM (Shape of a plastic bottle) [2006] ECR II-811, paragraph 18 and the case-law cited).

58 In the present case, in the first contested decision and in the second contested decision, the Grand Board of Appeal and the First Board of Appeal set out in sufficient detail the facts and the legal considerations regarding the descriptiveness of the marks applied for in order to allow interested parties to know the justification for the measure adopted, so as to enable them to protect their rights, and to enable the Court to exercise its power to review the legality of those decisions on that matter. Therefore, the complaint alleging infringement of that obligation must be dismissed as unfounded.

59 The second part of the single plea raised in each of the two actions must therefore be rejected as unfounded.

Third part of the single plea raised in each of the two actions: OHIM’s refusal to interpret the ground for refusal of registration referred to in Article 7(1)(c) of Regulation No 207/2009 in the light of the public interest underlying it

60 It is apparent from the case-law referred to in paragraphs 22 and 26 above that the absolute grounds for refusal referred to in Article 7(1) of Regulation No 207/2009 pursue an aim which is in the public interest, which requires that signs or indications which are descriptive of the categories of goods or services in respect of which registration is applied for may be freely used by all.

61 Hence, it is sufficient for OHIM to find that one of the absolute grounds for refusal provided for in Article 7(1) of Regulation No 207/2009 exists for registration of the trade marks applied for to be refused, in the light of the public interest underlying those grounds.

62 Thus, since protection of that aim in the public interest is inherent in those absolute grounds for refusal, it is clear that the applicant is wrong to criticise OHIM for failing to identify a public interest aim requiring protection in this case.

63 The third part of the single plea raised in each of the two actions must therefore be rejected as unfounded.

64 It follows from all of the foregoing considerations that, since none of the applicant’s arguments in support of the three parts of the single plea raised in each of the two actions is well founded, the plea must be rejected in each of the cases, T-310/09 and T-383/09, and therefore the applications must be dismissed in their entirety.

Costs

65 Under Article 87(2) of the Rules of Procedure, 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, in both Case T-310/09 and Case T-383/09, it must be ordered to bear all the costs in each of those two cases, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

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).

Pelikánová

Jürimäe

Van der Woude

Delivered in open court in Luxembourg on 12 April 2011.

[Signatures]

* Language of the case: English.