Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

23 April 2018 (*)

(EU trade mark — Application for EU word mark ONCOTYPE DX GENOMIC PROSTATE SCORE — Absolute ground for refusal — Descriptiveness — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001) — Equal treatment)

In Case T‑354/17,

Genomic Health, Inc., established in Redwood City, California (United States of America), represented by A. Reid, Solicitor,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and K. Sidat Humphreys, acting as Agents,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 14 February 2017 (Case R 1682/2016-5), concerning an application for registration of the word sign ONCOTYPE DX GENOMIC PROSTATE SCORE as an EU trade mark,

THE GENERAL COURT (Sixth Chamber),

composed of G. Berardis (Rapporteur), President of the Chamber, S. Papasavvas and O. Spineanu-Matei, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 6 June 2017,

having regard to the response lodged at the Court Registry on 18 August 2017,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 15 March 2016 the applicant, Genomic Health, Inc., filed an application for the registration of an EU trade mark at the European Union Intellectual Property Office (EUIPO) in accordance with Council Regulation (EU) No 207/2009 of 26 February 2009 on the EU trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) No 2017/1001 of the European Parliament and Council of 14 June 2017 on the EU trade mark (OJ 2017 L 154, p. 1)).

2        The mark for which registration was sought is the word sign ONCOTYPE DX GENOMIC PROSTATE SCORE.

3        The services in respect of which registration was sought are in Class 44 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 to the following description: ‘Medical testing for diagnostic and treatment purposes in the field of cancer; providing medical information to medical professionals in the form of reports in the field of cancer’.

4        By letter of 6 April 2016, the examiner raised an objection to the registration of the mark applied for on the grounds that it was descriptive and had no distinctive character, within the meaning, respectively, of Article 7(1)(c) and (b) of Regulation No 207/2009 (now Article 7(1)(c) and (b) of Regulation 2017/1001), read in conjunction with Article 7(2) of Regulation No 207/2009 (now Article 7(2) of Regulation 2017/1001).

5        On 14 April 2016 the applicant submitted its observations on the grounds relied on by the examiner for refusal of the mark applied for.

6        By decision of 14 July 2016, the examiner, confirming his initial objections, rejected the application for registration of the mark applied for, on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

7        On 13 September 2016 the applicant filed a notice of appeal against the examiner’s decision at EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).

8        By decision of 14 February 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal in its entirety.

9        In the first place, the Board found that on the basis of Article 7(1)(c) of Regulation No 207/2009, the verbal sign ONCOTYPE DX GENOMIC PROSTATE SCORE was descriptive of the services covered by the mark applied for. In that regard, first, the Board of Appeal stated that the services were aimed at a specialist public, composed of medical professionals and affected patients, who have a higher than average degree of attention in regard to the services offered. The Board stated that, since the mark applied for was composed of English words, account had to be taken of the public in the English-speaking territory of the European Union, namely, at least, the United Kingdom, Ireland and Malta.

10      Second, the Board of Appeal found that the word ‘oncotype’, being composed of the terms ‘onco’ and ‘type’, would be perceived by the relevant public, or at least by medical professionals, as referring to a ‘type of tumour’. In addition, on the subject of the term ‘dx’, the Board held that a large part of the relevant public would understand that term as an abbreviation of the word ‘diagnostic’. According to the Board, the words ‘genomic prostate score’ are defined in the Collins English Dictionary and are more easily understood, to the effect that they are perceived by the relevant public as referring to the genetic possibility of determining the potential presence of a prostate tumour, and its extent (‘score’). Consequently, the Board of Appeal held that the public concerned would easily understand the mark applied for as referring to services which detect, diagnose and assess prostate tumours. The Board therefore refused the application for registration in accordance with Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 7(2) of that directive.

11      In the second place, the Board of Appeal found that, since the mark applied for was descriptive of the characteristics of the services provided, it is limited to a simple message describing what those services seek to achieve without any fanciful or distinctive elements that would make the sign memorable for the public. Accordingly, the Board also refused the application for registration under Article 7(1)(b) of Regulation No 207/2009, read in conjunction with Article 7(2) of that directive.

12      In the third place, the Board of Appeal found that, in response to the applicant’s argument regarding the registration of earlier marks which are similar to the mark applied for, the fact that EUIPO had previously accepted the registration of such marks did not prevent it from subsequently refusing to register a similar mark.

 Forms of order sought

13      The applicant claims, in essence, that the Court should:

–        annul the contested decision;

–        vary the contested decision to confirm that there were no grounds for refusal of the mark applied for on the basis of the combined provisions of Article 7(1)(c) or (b) and Article 7(2) of Regulation No 207/2009;

–        order EUIPO to pay the costs.

14      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

15      In support of its action, the applicant relies on three pleas in law, first, a breach of the general principles of equal treatment, good administration and legal certainty, second, an infringement of Article 7(1)(c) and 7(2) of Regulation No 207/2009 and third, an infringement of Article 7(1)(b) and 7(2) of Regulation No 207/2009.

16      It is appropriate to examine, first, the second plea and then, the third and first pleas, in that order.

 The second plea in law: infringement of Article 7(1)(c) and 7(2) of Regulation No 207/2009

17      According to the applicant, the Board of Appeal erred in concluding that the mark applied for had a sufficiently direct and specific link with the services covered, to enable the public concerned to perceive immediately, and without further thought, a description of the services in question or of one of their characteristics.

18      More specifically, first, the applicant submits that the Board of Appeal carried out an incorrect analysis of the mark applied for, since it dissected the mark in order to analyse each of its elements individually on the basis of dictionary definitions. That analysis prevented the Board of Appeal from examining the mark applied for as a whole and led it to find that the mark was descriptive, when that is not the case.

19      Next, the applicant claims that the Board of Appeal, in its analysis, was wrong to focus solely on the dictionary definitions corresponding to the elements or the individual terms of which the mark applied for is composed. However, according to the applicant, even if such a method of analysis were correct, it would not allow for a conclusion that the mark applied for is descriptive, since certain individual elements of which the mark is composed are either not defined in the dictionary or have multiple meanings.

20      Finally, the applicant states that if a mark is to be denied registration, it has to contain indications that are directly descriptive. That is not the case here, given that the mark applied for does not provide any information on, for example, what medical testing to be conducted, at what stage of diagnosis, examination or otherwise the testing is to be conducted, the form of data or information that arises from the testing, whether the score is offered as a figure or percentage and what that means, what the actual diagnosis is and whether the full complement of genetic material (genomic) is assessed. Therefore, the relevant public would not, according to the applicants, be capable of perceiving the meaning of the mark applied for or the link with the services provided.

21      EUIPO disputes those arguments.

22      Under Article 7(1)(c) of Regulation No 207/2009, 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. In addition, Article 7(2) of Regulation No 207/2009 specifies that paragraph 1 of that article is applicable notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

23      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs and indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31; see also judgment of 21 September 2017, InvoiceAuction B2B v EUIPO (INVOICE AUCTION), T‑789/16, not published, EU:T:2017:638, paragraph 29 and the case-law cited).

24      Furthermore, signs or indications which may serve, in trade, to designate the characteristics of the goods or services in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question, in order thereby to enable the consumer who purchases the goods or services designated by the mark to make the same choice again, on the occasion of a subsequent purchase, if it is a positive experience, or to make a different choice, if it is a negative one (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 21 September 2017, INVOICE AUCTION, T‑789/16, not published, EU:T:2017:638, paragraph 30).

25      It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a link between the sign and the services in question that is sufficiently direct and specific to enable the public concerned to immediately perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgment of 20 July 2017, Windfinder R&L v EUIPO (Windfinder), T‑395/16, not published, EU:T:2017:530, paragraph 29 and the case-law cited). The assessment of the descriptiveness of a sign can be carried out only (i) in relation to the perception which the public concerned has of that sign and (ii) in relation to the goods or services covered (see judgment of 21 September 2017, INVOICE AUCTION, T‑789/16, not published, EU:T:2017:638, paragraph 32 and the case law cited).

26      Those considerations can guide the Court in examining the applicant’s argument that the Board of Appeal committed an error in considering the mark applied for to be descriptive.

27      As a preliminary point, in relation to the relevant public, it must be stated that the applicant does not contest that, as is made clear in paragraph 17 of the contested decision, the services covered by the mark applied for are addressed to a specialised public composed of medical professionals and affected patients who have a higher than average degree of attention in regard to those services. It must also be noted that, as the Board of Appeal held (see paragraph 18 of the contested decision), since the mark applied for is composed of English words, whether there are absolute grounds for refusal in the present case must be assessed in relation to the public in the English-speaking territory of the European Union, namely, at least, in the United Kingdom, Ireland and Malta.

28      In the first place, in relation to the applicant’s argument that the Board of Appeal used an incorrect method of analysis in carrying out an individual examination of the words which compose the mark applied for, it must be borne in mind that, in the case of compound word signs, such as the one in the present case, it is necessary to take into consideration the overall impression that the mark produces. That does not mean, however, that one may not first examine each of the individual constituent elements of the mark applied for. Therefore, in the course of an overall assessment of the mark, it may be useful to examine each of its constituent elements (see, to that effect, judgments of 8 February 2011, Paroc v OHIM (INSULATE FOR LIFE), T‑157/08, EU:T:2011:33, paragraph 50 and the case-law cited, and of 23 October 2017, Barmenia Krankenversicherung v EUIPO (Mediline), T‑810/16, not published EU:T:2017:749, paragraph 22).

29      It should also be borne in mind that a mark composed of elements each of which is descriptive of the goods or services for which registration is applied for is itself descriptive of the characteristics of those goods or services, unless there is a perceptible difference between the mark applied for and the mere sum of its constituent elements. That presupposes that the mark applied for creates, because of the unusual combination of each of its constituent elements in relation to the goods or services covered, an impression sufficiently far removed from that produced by the mere combination of meanings lent by those elements (see judgment of 12 April 2016, Choice v EUIPO (Choice chocolate & ice cream), T‑361/15, not published, EU:T:2016:214, paragraph 25 and the case-law cited).

30      In addition, while the average consumer normally perceives a mark as a whole, the fact nonetheless remains that in perceiving a word sign, he will break it down into the word elements which, for him, suggest a specific meaning (see, to that effect, judgment of 23 October 2017, Mediline, T‑810/16, not published EU:T:2017:749, paragraph 24).

31      It follows that, as regards verbal expressions which consist of a combination of elements, the question whether they are descriptive may be assessed, in part, in relation to each of those elements, taken separately, but must, in any event, also be answered in relation to the whole which they comprise (see judgments of 18 May 2017, Sabre GLBL v EUIPO (INSTASITE), T‑375/16, not published, EU:C:2017:348, paragraph 41 and of 23 October 2017, Mediline, T‑810/16, not published, EU:T:2017:749, paragraph 23).

32      In the present case, it must be observed that, in paragraphs 26 and 27 of the contested decision, the Board of Appeal examined the overall impression that the public concerned will have of the mark applied for, after assessing its various constituent elements. The Board of Appeal thus found that the part of the relevant public comprised of medical professionals would, at least, be capable of easily perceiving that the mark applied for, taken as a whole, refers to services which can detect, diagnose, and measure the genetic possibility of a prostate tumour. As EUIPO correctly states, whilst the mark applied for is associated with services relating to Class 44, it immediately informs the relevant public of the nature of those services and of the intended purposes of those services, namely, first, that those relating to medical testing for the purposes of diagnosis and treatment are genomic testing services for patients affected by prostate cancer diagnosed on the basis of an analysis of the genes present in those patients’ tumours, and second, that the services which consist of providing medical information in the form of a report in the field of cancer to medical professionals concern genomic testing of a prostate tumour for diagnosed patients, that report being aimed at assessing the probability of a relapse or a progression of the tumour. There is thus a direct link between the mark applied for and the services in question, in the sense that the mark will immediately inform the relevant public, with no need for further thought, of the nature and intended purpose of those services which it covers.

33      It follows that the Board of Appeal cannot be criticised for having first carried out, in paragraphs 22 to 25 of the contested decision, a separate examination of the constituent elements of the mark applied for. Furthermore, within the context of that examination, the Board of Appeal committed no error in finding that the neologism ‘oncotype’ was descriptive, since the Board considered it to be a word resulting from a combination of the prefix ‘onco’, which designates a tumour, and the word ‘type’ which designates a group of things which have a particular common characteristic, the juxtaposition of which can be perceived, in relation to the services relating to cancer intended for professionals, as referring to a type of tumour. Moreover, the fact that that word is not cited in the dictionary as such does not alter the assessment that it is descriptive of the services covered by the mark applied for (see, to that effect, judgments of 13 June 2014, Grupo Flexi de León v OHIM (FLEXI), T‑352/12, not published, EU:T:2014:519, paragraph 23, and of 18 May 2017, (INSTASITE), T‑375/16, not published, EU:T:2017:348, paragraph 54).

34      In the second place, as regards the applicant’s argument that the method used by the Board of Appeal, which focused solely on dictionary definitions, is not the correct method in order to determine whether a mark is descriptive, it must be borne in mind that the decisive factor is the consumer’s perception and not the definitions originating from dictionaries (see, to that effect, judgment of 18 May 2017, INSTASITE, T‑375/16, not published, EU:T:2017:348, paragraph 47).

35      However, contrary to what the applicant claims, the Board of Appeal does not rely exclusively on the definitions given in dictionaries of the words which compose the mark applied for. By means of the arguments in paragraphs 26 and 28 of the contested decision, the Board of Appeal shows that its final analysis of the mark applied for is based on the perception of that mark by the relevant public.

36      In addition, as regards the applicant’s argument that even if the method of using dictionary definitions is considered to be correct, that method does not lead to a conclusion that the mark is descriptive, since a certain number of its constituent elements are not defined in the dictionary or have several possible meanings, it must be borne in mind that, first, it suffices, for the sign to be considered as descriptive, that at least one of its potential meanings designates one of the characteristics of the services concerned (see, to that effect, judgment of 16 April 2015, Drogenhilfe Köln Projekt v OHMI (Rauschbrille), T‑319/14, not published, EU:T:2015:208, paragraph 20) and, second, that argument does not take account of the key principle, recalled in paragraph 25 above, that the question of whether a mark is descriptive must be assessed, first, in relation to the perception of the relevant public, and second, in relation to the services covered by the mark concerned.

37      Given that the main criterion to be taken into account for the analysis of the descriptiveness of a mark is the perception of the mark by the relevant public, the fact that certain of its constituent elements have several possible meanings, or are not defined in a dictionary, does not allow the conclusion that the mark is not descriptive. Thus, by means of an analysis based, first, on the definitions in the Collins English Dictionary, as well as those in an on-line medical dictionary, and second, on the perception of the mark applied for as a whole by the relevant public, taking account of the nature of the services covered by that mark, the Board of Appeal concluded that it was descriptive, on the basis of Article 7(1)(c) of Regulation No 207/2009.

38      In the third place, concerning the applicant’s argument that the mark is not descriptive, since it provides no information to the relevant public on the characteristics of the services concerned, it must be borne in mind that Article 7(1)(c) of Regulation No 207/2009 covers, in particular, characteristics of the rendering of the services, such as in this case, the quality, quantity, intended purpose, value, geographical origin or the time of production. Thus, the fact that the mark concerned does not provide indications on specific elements, such as, for example, the type of testing, the stage at which that testing is to occur or the manner in which it will be achieved by the services in question, cannot prove that it is not descriptive. In the present case, the word sign ONCOTYPE DX GENOMIC PROSTATE SCORE, even if it does not provide specific information on all the specific characteristics referred to in paragraph 20 above, designates certain specific characteristics of the services covered by the mark applied for which readily allows, as was pointed out in paragraph 32 above, the public concerned, or at least the part of that public which comprises medical professionals, to perceive that it relates to services which make it possible to detect, diagnose, and measure the genetic possibility of a prostate tumour, specific characteristics which correspond to the accepted meaning of the term ‘characteristic’ covered by Article 7(1)(c) of Regulation No 207/2009.

39      In view of all the foregoing, it must be concluded that the Board of Appeal did not commit any error in finding that the mark applied for could not be registered in accordance with Article 7(1)(c) of Regulation No 207/2009.

 The third plea in law: an infringement of Article 7(1)(b) and Article 7(2) of Regulation No 207/2009

40      The applicant challenges the assessment carried out by the Board of Appeal under Article 7(1)(b) of Regulation No 207/2009 and contends that the mark applied for more than fulfils the minimum degree of distinctive character, since it is a complex, unusual and striking mark, which has no direct meaning for the relevant public and requires a cognitive process or interpretative effort on the part of the relevant public.

41      EUIPO disputes those arguments.

42      In that regard, it must be borne in mind that, as is clear from Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue to be ineligible for registration as an EU trade mark (order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 27; see, also, judgment of 21 September 2017, INVOICE AUCTION, T‑789/16, not published, EU:C:2017:638, paragraph 49 and the case-law cited).

43      In the present case, since the mark applied for has been held to be descriptive of the services in question, and cannot, consequently, be registered as an EU trade mark, failing on the ground for refusal provided for in Article 7(1)(c) of Regulation No 207/2009, the third plea in law, alleging infringement of Article 7(1)(b) and 7(2) of Regulation No 207/2009, must be rejected as being ineffective.

 The first plea in law: breach of the general principles of equal treatment, good administration and legal certainty.

44      The applicant contends that, in the examination of the mark applied for, the Board of Appeal did not give sufficient weight to the fundamental principles of equal treatment, good administration and legal certainty and in particular, did not take sufficient account of the acceptance of registration by EUIPO, particularly for services relating to Class 44, of EU trade marks filed by the applicant which are highly similar to the mark applied for, containing elements which are practically identical such as ‘oncotype’, ‘dx’, and ‘score’. The mark applied for is at least as distinctive as the applicant’s earlier signs, for which registration was accepted. According to the applicant, in considering that the earlier EU trade marks do not constitute applicable precedents and in upholding the arbitrary refusal of registration of the mark applied for, the contested decision risks introducing a large degree of uncertainty into the practice of the EUIPO. 

45      EUIPO disputes those arguments.

46      In that regard, it must be borne in mind that, according to settled case-law, decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of those boards of appeal (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; of 27 June 2017, Jiménez Gasalla v EUIPO (B2B SOLUTIONS), T‑685/16, not published, EU:T:2017:438, paragraph 39, and of 26 September 2017, Waldhausen v EUIPO (Representation of a horse head silhouette), T‑717/16, not published, EU:T:2017:667, paragraph 56). Furthermore, it must be observed that it would be contrary to the function of the Boards of Appeal as a review body, as defined in recital 13 and in Articles 58 to 64 of Regulation No 207/2009, for them to be bound by the decisions of lower-ranking adjudicating bodies of the EUIPO (judgments of 9 November 2016, Smarter Travel Media v EUIPO (SMARTER TRAVEL), T‑290/15, not published, EU:T:2016:651, paragraph 73, and of 30 March 2017, Apax Partners UK v EUIPO — Apax Partners Midmarket (APAX PARTNERS), T‑209/16, not published, EU:T:2017:240, paragraph 31).

47      It also follows from the case-law that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law (judgments of 27 June 2017, B2B SOLUTIONS, T‑685/16, not published, EU:T:2017:438, paragraph 40, and of 26 September 2017, (Representation of a horse head silhouette), T‑717/16), not published, EU:T:2017:667, paragraph 58). Thus, it is true that, as regards the principles of equal treatment, legal certainty and good administration, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and, in particular, consider whether or not the decision should be the same (judgments of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 67, and of 20 July 2017, Windfinder R&L v EUIPO (Windfinder), T‑395/16, not published, EU:T:2017:530, paragraph 71). Nevertheless, the way in which those principles are applied must be consistent with respect for the principle of legality. Consequently, a person who applies for registration of a sign as an EU trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed in his favour or in favour of a third party (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 68 and the case-law cited).

48      In addition, it is specifically for reasons of legal certainty and of good administration that the examination of any trade mark application must be stringent and thorough, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each specific case, because registration of a sign as an EU trade mark depends on specific criteria, which apply in the factual circumstances of the particular case, and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgments of 15 September 2017, sheepworld v EUIPO (Beste Mama), T‑422/16, EU:C:2017:606, paragraph 46, and of 26 September 2017, (Representation of a horse head silhouette), T‑717/16, not published, EU:T:2017:667, paragraph 59).

49      It follows from the case-law of the Court of Justice that the considerations set out in paragraphs 46 to 48 above apply even if the sign in respect of which registration is sought as an EU trade mark is composed in a manner identical to that of a mark in respect of which EUIPO has already approved registration as an EU trade mark and which relates to goods or services identical or similar to those in respect of which registration of the sign in question is sought (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 70 and the case-law cited).

50      In the present case, it is apparent from the assessment made in paragraphs 27 to 39 above that the Board of Appeal correctly held, on the basis of a thorough examination taking into account the perception of the relevant public, that the applicant’s application for an EU trade mark was caught by the absolute grounds for refusal set out in Article 7(1) of Regulation No 207/2009.

51      It follows that, in accordance with the case-law referred to in paragraphs 46 to 49 above, that assessment cannot be called into question on the sole ground that the Board of Appeal did not follow, in the present case, EUIPO’s decision-making practice. It must be noted, in particular, that earlier decisions by the Boards of Appeal cannot give rise to legitimate expectations (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 72 and the case-law cited).

52      Moreover, concerning more specifically the EU trade mark ONCOTYPE DX BREAST RECURRENCE SCOR, of which the application for registration, for services in Class 44, had been filed on 15 March 2016, namely the same day as the application for the mark in question, it should be observed that, as EUIPO noted, that mark had still not been registered on 14 July 2016, the date on which the examiner gave his decision to refuse registration of the mark applied for, which subsequently formed the subject matter of the action before the Board of Appeal, giving rise to the contested decision. Therefore, contrary to what the applicant claims, in the present case, it is not a situation in which the examiner refused to register the mark applied for, in the full knowledge that registration of a mark claimed to be similar was allowed, but rather a situation in which, in subsequently registering the mark ONCOTYPE DX BREAST RECURRENCE SCORE, EUIPO did not take account of the fact that the application for registration of the mark applied for had been rejected.

53      The applicant cannot therefore criticise the Board of Appeal for having based the contested decision on Regulation No 207/2009 as interpreted by the Courts of the European Union, rather than on the earlier practice of EUIPO in relation to registration of an EU trade mark.

54      In the light of all the foregoing, the plea in law which alleges breach of the general principles of equal treatment, good administration and legal certainty must be rejected and, as a result, since all the pleas in law relied on have been rejected, the claim for annulment of the contested decision, and, consequently, the claim for variation of the contested decision, there being no need to rule on its admissibility, must be dismissed.

 Costs

55      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

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

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Genomic Health, Inc., to pay the costs.

Delivered in open court in Luxembourg on 23 April 2018.

*      Language of the case: English.

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