Blackrock v OHIM (SO WHAT DO I DO WITH MY MONEY) (Judgment) [2015] EUECJ T-609/13 (29 January 2015)

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(Community trade mark — Application for the Community word mark SO WHAT DO I DO WITH MY MONEY — Mark consisting of an advertising slogan — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009)

Blackrock, Inc., established in Wilmington, Delaware (United States), represented by S. Malynicz, Barrister, and K. Gilbert and M. Blair, Solicitors,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by I. Harrington, and subsequently by J. Crespo Carrillo, acting as Agents,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 11 September 2013 (Case R 572/2013-4), concerning an application for registration of the word sign SO WHAT DO I DO WITH MY MONEY as a Community trade mark,

composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,

having regard to the application lodged at the Court Registry on 22 November 2013,

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 rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,

1 On 28 August 2012, the applicant, Blackrock, Inc., filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 Registration as a mark was sought for the word sign SO WHAT DO I DO WITH MY MONEY.

3 The services in respect of which registration was sought are in Classes 35 and 36 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, for each of those classes, to the following description:

– Class 35: ‘Providing information and analysis relating to economic market data; providing business and market research services to individual and institutional financial investors and financial professionals; business management consultation; market analysis’;

– Class 36: ‘Investment management services; investment advice; financial risk management; stock brokerage services in the field of investment company shares; mutual fund brokerage services; mutual fund investment services; mutual fund distribution services; financial asset management; financial asset evaluation; investment services, namely, management and brokerage in the fields of stocks, bonds, options, commodities, futures and other securities, and the investment of funds of others; investment advisory services; financial investment research; equity capital investment; financial investment in the field of real estate; fiscal assessments and evaluations; financial management of real estate and mutual fund investment trusts; financial research; preparation of financial reports for others and financial analysis related thereto; providing financial information in the field of investment opportunities and financial analysis; investment management and distribution of shares of investment companies or other pooled investment vehicles, namely, of collateralized debt obligations, collateralized loan obligations, mutual funds, hedge funds and variable insurance funds; online financial services, namely, investment fund transfer and transaction services, financial planning and financial research; financial management and financial planning; distribution and administration of exchange-traded funds’.

4 By letter of 28 September 2012, the examiner informed the applicant that, pursuant to Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, the sign at issue could not be registered.

5 On 17 January 2013, the applicant submitted its observations on the grounds for refusal of the mark applied for referred to by the examiner.

6 By decision of 7 February 2013, the examiner maintained her initial objections, with the result that she refused registration of the mark applied for pursuant to Article 7(1)(b) and Article 7(2) of Regulation No 207/2009.

7 On 25 March 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against that decision.

8 By decision of 11 September 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the applicant’s appeal. It first of all pointed out that the services covered by the application for registration related to finance or investment and therefore had to do with money. It took the view that the relevant public was an English-speaking public consisting of average consumers and professionals and that the level of attention of that public was relatively low with regard to promotional indications. Furthermore, it noted that the expression ‘so what do I do with my money’ did not have several meanings, did not constitute a play on words, was neither fanciful nor resonant and did not contain any otherwise creative element and that, in the context of services that have to do with money, that expression was straightforward, easy to understand and in conformity with the rules of English grammar. According to the Board of Appeal, that expression merely raises a general question in the minds of consumers, inviting them to reflect on their financial situation. Furthermore, as regards expressions that may serve as advertising slogans, the Board of Appeal referred to the relevant case-law according to which such an expression, although not as such excluded from registration as a mark, had to be distinctive. In order to be distinctive, such a mark had to be perceived immediately by the relevant public as an indication of the commercial origin of the services in question. According to the Board of Appeal, that was not the case in this instance. It therefore concluded that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

11 In support of the action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, which is subdivided into two parts. By the first part, the applicant alleges that the Board of Appeal misapplied the principles laid down by the Court of Justice in the judgment of 21 January 2010 in Audi v OHIM, C-398/08 P, ECR, EU:C:2010:29. By the second part, which it is appropriate to deal with first, it submits that the Board of Appeal incorrectly assessed the distinctive character of the mark applied for.

12 In the second part of the single plea, the applicant alleges, in essence, that the Board of Appeal erred in finding that the mark applied for had no distinctive character. The applicant submits that that mark has resonance as a result of the terms used, their syntax and the highly unusual interrogative form and will be perceived by the relevant public as a trade mark as well as being perceived as a promotional statement.

14 Article 4 of Regulation No 207/2009 provides that a Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

15 The essential function of a trade mark is that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgment of 12 June 2007 in MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, EU:T:2007:172, paragraph 28, and judgment of 14 June 2007 in Europig v OHIM (EUROPIG), T‑207/06, ECR, EU:T:2007:179, paragraph 25).

16 Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character must not be registered.

17 According to settled case-law, for a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (judgment of 29 April 2004 in Procter & Gamble v OHIM, C‑468/01 P to C‑472/01 P, ECR, EU:C:2004:259, paragraph 32; judgment of 21 October 2004 in OHIM v Erpo Möbelwerk, C‑64/02 P, ECR, EU:C:2004:645, paragraph 42; and judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, paragraph 33).

18 That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the relevant public’s perception of the mark (see judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, paragraph 34 and the case-law cited, and judgment of 12 July 2012 in Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 24 and the case-law cited).

19 As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded as such by virtue of such use. For the purposes of assessing the distinctiveness of such marks, it is inappropriate to apply to those marks criteria stricter than those applicable to other signs (judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, paragraphs 35 and 36, and judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraph 25).

20 Whilst the criteria for assessing distinctiveness are the same for the various categories of trade mark, it may become apparent, when applying those criteria, that the relevant public’s perception is not necessarily the same in relation to each of those categories and that, therefore, it may prove more difficult to establish the distinctiveness of the marks in certain categories than of those in other categories (see judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, paragraph 37 and the case-law cited, and judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraph 26 and the case-law cited).

21 Such difficulties do not justify, in any event, the laying down of specific criteria supplementing or derogating from the criterion of distinctiveness in respect of word marks consisting of advertising slogans (see, to that effect, judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, paragraph 38, and judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraph 27).

22 An advertising slogan cannot, however, be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order for such a slogan to be distinctive (judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, paragraph 39, and judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraph 28).

23 Furthermore, the mere fact that a mark is perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient in itself to support the conclusion that that mark is devoid of distinctive character (judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, paragraph 44, and judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraph 29).

24 The laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character (judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, paragraph 45, and judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraph 30).

25 It is in the light of those considerations that it must be examined whether, as the applicant submits, the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009 in finding that the mark applied for was devoid of any distinctive character.

26 In the first place, as regards the definition of the relevant public, it must be pointed out that it is apparent from paragraph 19 of the contested decision that the relevant public consists of both average consumers and professionals, such as commercial undertakings which are active in the fields of finance and investment, and that, since the mark applied for consists of English words, its distinctive character has to be assessed by reference to the English-speaking public. That definition of the relevant public, which the applicant does not, moreover, dispute, must be confirmed.

27 Furthermore, it must be pointed out, as the Board of Appeal stated in paragraph 21 of the contested decision, a statement which has not been contradicted by the applicant, that the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether what is involved are average end consumers (see, to that effect, judgment of 17 November 2009 in Apollo Group v OHIM (THINKING AHEAD), T-473/08, EU:T:2009:442, paragraph 33, and judgment of 25 March 2014 in Deutsche Bank v OHIM (Passion to Perform), T‑291/12, EU:T:2014:155, paragraph 32) or a more attentive public made up of specialists or circumspect consumers (see, to that effect, judgment of 5 December 2002 in Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS), T‑130/01, ECR, EU:T:2002:301, paragraph 24; judgment of 3 July 2003 in Best Buy Concepts v OHIM (BEST BUY), T‑122/01, ECR, EU:T:2003:183, paragraph 25; and judgment of 15 September 2005 in Citicorp v OHIM (LIVE RICHLY), T‑320/03, ECR, EU:T:2005:325, paragraph 74). Those findings are valid even if the services covered by the application for registration are financial and monetary services (see, to that effect, judgment in LIVE RICHLY, EU:T:2005:325, paragraphs 73 and 74, and judgment in Passion to Perform, EU:T:2014:155, paragraph 33).

28 In the second place, it is necessary to ascertain whether the Board of Appeal correctly analysed the meaning of the mark applied for in order to conclude that the mark had no distinctive character by reference to the services in respect of which registration had been applied for and by reference to the relevant public’s perception of that mark.

29 As regards compound word signs, such as that at issue in the present case, it is apparent from settled case-law that 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 signs by the relevant public (see, to that effect, judgment of 8 May 2008 in Eurohypo v OHIM, C‑304/06 P, ECR, EU:C:2008:261, paragraph 41 and the case-law cited). That does not mean, however, that one may not start by examining each of the individual features which make up the mark in question. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (judgment of 25 October 2007 in Develey v OHIM, C‑238/06 P, ECR, EU:C:2007:635, paragraph 82; judgment of 8 February 2011 in Paroc v OHIM (INSULATE FOR LIFE), T‑157/08, ECR, EU:T:2011:33, paragraph 50; and judgment of 6 June 2013 in Delphi Technologies v OHIM (INNOVATION FOR THE REAL WORLD), T‑515/11, EU:T:2013:300, paragraph 29).

30 In the present case, the sign applied for consists of eight common English words, namely the words ‘so’, ‘what’, ‘do’, ‘I’, ‘do’, ‘with’, ‘my’ and ‘money’. Consequently, as was rightly stated by the Board of Appeal in paragraph 8 of the contested decision, the word sign SO WHAT DO I DO WITH MY MONEY, considered as a whole, may easily be understood by the relevant public, in view of the common English words of which it consists and the field of services covered by the mark applied for.

31 The combination of common English words in a single sign, which is in conformity with the rules of English grammar, conveys a clear and unequivocal message which is immediately apparent and does not require any interpretative effort on the part of an English-speaking consumer (see, to that effect, judgment in Passion to Perform, cited in paragraph 27 above, EU:T:2014:155, paragraph 41). The expression ‘so what do I do with my money’ therefore prompts the speaker to ask himself what he should do with his financial resources and his assets. In the present case, the average reasonably well informed and reasonably observant and circumspect consumer of the services covered by the application for registration will, on reading or hearing that expression, ask himself whether he is using his money effectively. Consequently, the Board of Appeal did not err in stating, in paragraph 12 of the contested decision, that the question which is inherent in the mark applied for raises a general concern that that consumer should reflect on his financial situation, which constitutes the starting point of any reflection by a consumer who is considering asking the advice of a financial expert or putting his financial dealings in the hands of one of the providers of those services.

32 In that regard, it must also be pointed out that, contrary to what the applicant maintains, the Board of Appeal did not introduce, in its analysis of the distinctive character of the sign, concepts that are not in the expression ‘so what do I do with my money’, such as that of reflection by the consumer, the fact that it is a request by the consumer to the provider and the competence of the provider. First, it should be borne in mind that reflection by the relevant public is by definition contained in the mark applied for, the applicant itself stating in its application that ‘it is in the form of a question by the consumer’. Secondly, the Board of Appeal did not err in finding, indirectly, as regards the ability of the mark applied for to serve as an indication of the commercial origin of the services covered by the application for registration, that that expression merely raised a general demand for those services on the part of the relevant public. Thirdly, it must be pointed out that, in paragraph 15 of the contested decision, the Board of Appeal confined itself to stating that that expression was laudatory and promotional, which the applicant does not, moreover, dispute, inasmuch as the expression in question implied the idea that a provider of those services using that expression was claiming to be a competent partner in financial dealings and to be capable of answering the questions of a consumer who came to consult him. The applicant’s arguments in that regard must therefore be rejected.

33 What is more, the expression of which the mark applied for consists is unequivocal and does not have any particular semantic depth which would prevent the relevant public from making a direct link with the services covered by that mark (see, to that effect, judgment in INNOVATION FOR THE REAL WORLD, cited in paragraph 29 above, EU:T:2013:300, paragraph 40). In line with what was stated by the Board of Appeal, it must be pointed out that it is precisely when the public asks itself the question ‘what do I do with my money’ that it will need to consult an investment professional. In that regard, the Board of Appeal’s finding that all the services covered by the application for registration relate to money must be confirmed. The mark applied for thus constitutes a banal expression in view of the nature of those services.

34 Next, the applicant claims that, in her decision, the examiner found that the mark applied for had multiple meanings and that, in the contested decision, the Board of Appeal should have taken that finding as a basis for concluding that that mark has distinctive character. That argument is the result of a misreading of the examiner’s decision. The examiner only referred to the judgment in LIVE RICHLY, cited in paragraph 27 above, EU:T:2005:325, paragraph 84, in stating the reasons for her decision. That judgment stated inter alia that the existence of multiple meanings was not in itself sufficient to confer distinctive character on a promotional slogan. Consequently, even if the examiner had admitted that the mark applied for had multiple meanings, that would not, in itself, have been sufficient to confer distinctive character on that mark. The applicant’s argument cannot therefore be accepted.

35 In any event, although there is continuity, in terms of their functions, between the different departments of OHIM (judgment of 6 November 2007 in SAEME v OHIM — Racke (REVIAN’s), T‑407/05, ECR, EU:T:2007:329, paragraph 49), it is apparent from the case-law that the Board of Appeal is not, under Article 64(1) of Regulation No 207/2009, limited by the reasoning of the department of OHIM which decided on the case at first instance (judgment of 16 February 2000 in Procter & Gamble v OHIM (Shape of a soap), T‑122/99, ECR, EU:T:2000:39, paragraph 27). The Board of Appeal may therefore carry out a new, full examination of the merits of the application for registration, in terms of both law and fact, that is to say, in the present case, itself decide on the application for registration by either rejecting it or declaring it to be founded, thereby either upholding or reversing the decision appealed against (see judgment of 3 July 2013 in Airbus v OHIM (NEO), T‑236/12, ECR, EU:T:2013:343, paragraph 21 and the case-law cited, and judgment in REVIAN’s, EU:T:2007:329, paragraph 51 and the case-law cited).

36 Furthermore, the fact that the English word ‘I’ may, as the applicant claims, be used by everybody cannot confer multiple meanings on the expression of which the mark applied for consists. As the Board of Appeal rightly pointed out, in paragraph 11 of the contested decision, the fact that the same sentence may be used by a variety of different persons does not mean that it has a different meaning each time. In addition, the applicant has not substantiated its claim that the message has a different meaning according to whether it is perceived by an institutional investor, a manager or a private individual. As regards the English words ‘what’ and ‘do’, which also, according to the applicant, have multiple meanings, it is sufficient to point out, as OHIM observes, that the applicant has not stated the other possible meanings of the expression as a whole or the possible messages which that expression could therefore convey.

37 As regards the grammatical structure of the mark applied for, the fact that it is expressed in the form of a question, and, in particular, in the form of a question by the consumer, cannot, in the present case, offset the banality of the expression, in view of the services covered by the application for registration. Furthermore, it must be stated that the interrogative form of the mark applied for, which does not, moreover, contain a question mark, is not sufficient, contrary to what the applicant claims, to confer distinctive character on that mark (see, to that effect and by analogy, judgment of 2 July 2008 in Ashoka v OHIM (DREAM IT, DO IT!), T‑186/07, EU:T:2008:244, paragraph 27).

38 It must, in addition, and contrary to what the applicant submits, be pointed out that the use of the English word ‘so’, meaning ‘therefore’, at the beginning of the slogan at issue, although it implies the occurrence of a prior event, does not, however, suggest that a cognitive process to interpret that slogan is set off in the mind of the relevant public. As maintained by OHIM, the inclusion of that word simply indicates that that public takes a pause for thought or reflection before making an important decision, namely whether to invest its money or not. Consequently, the use of that word is not capable of calling into question the meaning of the expression at issue, which is completely straightforward, as the Board of Appeal rightly pointed out in paragraph 9 of the contested decision. It follows that the mark SO WHAT DO I DO WITH MY MONEY does not have an unusual grammatical structure which may confer distinctive character on it.

39 As regards, in particular, the allegedly rhetorical and open-ended nature of the question which is inherent in the slogan in question, it is sufficient to point out, in line with what OHIM states, that the fact that there might be many answers, or even no answer, to that question has no bearing on the consumer’s understanding of it.

40 Lastly, it is important to point out that the fact that the mark applied for has not already been used by third parties simply means that it is not identical to an earlier mark, which is, in any event, relevant only in the context of opposition proceedings pursuant to Article 8 of Regulation No 207/2009.

41 The Board of Appeal was therefore right in finding that the mark SO WHAT DO I DO WITH MY MONEY was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

43 By the first part of the single plea in law, the applicant complains, in essence, that the Board of Appeal failed to apply the test set out in the judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, to the effect that an advertising slogan may have a dual function in being both a promotional formula and an indication of commercial origin, and that it relied on a test, which came from outdated judgments, to the effect that it was sufficient if the mark was seen as promotional by the relevant public.

45 In the first place, it must be pointed out that the Board of Appeal, first, analysed the distinctive character of the mark applied for, in paragraphs 8 to 14 of the contested decision, and found that that mark was simply a concept relating to the use of money, which the relevant public did not need to make an effort to interpret and which was closely connected with the services covered by the application for registration, and that that mark was therefore ‘not capable of distinguishing any of the vast number of service providers in the relevant field, that is, to serve as an indicator of commercial origin’. It was only in paragraph 15 of the contested decision that the Board of Appeal stated that the mark applied for was also laudatory and promotional. It then continued its analysis of the distinctive character of the mark applied for and concluded, in paragraph 24 of the contested decision, that ‘[t]he applied-for expression, taken as a whole, w[ould] not enable the target public to differentiate the claimed services in Classes 35 and 36 as to their trade origin’.

46 It follows that, contrary to what the applicant claims, the Board of Appeal carried out an in-depth analysis of the ability of the expression ‘so what do I do with my money’ to indicate to the consumer the commercial origin of the services at issue before carrying out the examination of whether that expression was a purely promotional and laudatory formula. In doing so, it also stated, thus showing its correct understanding of the judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, that the criteria for assessing marks such as that at issue were ‘not stricter, but also not more lenient’ than those applicable to other categories of marks. Accordingly, it did not in any way rule out the possibility that signs might in principle be understood both as promotional messages and as indications of commercial origin and it did not therefore, contrary to what the applicant claims, rely on the test, which came from the case-law prior to the judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, to the effect that it was sufficient if the mark was seen as promotional for it to be precluded from having distinctive character.

47 Consequently, in the contested decision, the mark applied for was not rejected on the sole ground that it would be perceived as promotional. The Board of Appeal did not reject the trade mark application on the ground that the sign constituted a promotional slogan, but on the ground that, beyond its promotional meaning, there was nothing in it which would enable the relevant public to perceive it as an indication of the commercial origin of the services at issue.

48 The applicant’s argument that, in essence, the reasoning of the Court of Justice in the judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, should lead the General Court to hold that the Board of Appeal erred in its understanding of the correct test to be applied in assessing distinctive character and, consequently, to annul the contested decision cannot be accepted. In paragraph 47 of that judgment, the Court of Justice pointed out that the mark VORSPRUNG DURCH TECHNIK, which means ‘advance or advantage through technology’, had a distinctive character for the relevant public since that mark could ‘have a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered’. However, contrary to the applicant’s claims, unlike the mark VORSPRUNG DURCH TECHNIK, the mark applied for, which does not, in this case, make it possible to identify the commercial origin of the services which it covers, has no distinctive character, as has been stated in paragraphs 30 to 41 above (see, to that effect, INNOVATION FOR THE REAL WORLD, cited in paragraph 29 above, EU:T:2013:300, paragraph 54 and the case-law cited).

49 In the second place, it must be pointed out that, contrary to what the applicant claims, the Board of Appeal did not err in referring to paragraph 31 of the judgment in Smart Technologies v OHIM (WIR MACHEN DAS BESONDERE EINFACH), T‑523/09, EU:T:2011:175, rather than to the judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460. It must be stated that, in the latter judgment, the Court of Justice pointed out, in dismissing the appeal in its entirety, first, that the findings of the General Court in paragraph 31 of the judgment under appeal did not disclose a misreading of the principles established by the Court of Justice in the judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, and, secondly, that although the formulation used by the General Court in paragraph 31 of the judgment under appeal was different from that used in paragraph 45 of the judgment in Audi v OHIM, cited in paragraph 11 above, EU:C:2010:29, the General Court had rightly held in that paragraph that the mark applied for was devoid of any distinctive character because it was not perceived by the relevant public as an indication of the commercial origin of the goods and services concerned (judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraphs 32 and 33). The reference made to the judgment in WIR MACHEN DAS BESONDERE EINFACH, EU:T:2011:175 in the contested decision does not therefore vitiate the legality of that decision.

50 In the third place, as regards paragraph 18 of the contested decision, in which, according to the applicant, the Board of Appeal referred to the alleged test of asking oneself whether a consumer, when seeing the slogan of which the mark applied for consists, will think that that slogan constitutes a reference to a service provider with that same name, it must be pointed out, as observed by OHIM, that that assertion constitutes a passing comment and not, as the applicant claims, the application of an incorrect legal test.

51 In any event, that assertion, which, read in context, seeks only to reiterate the idea that the slogan at issue is not capable of indicating the commercial origin of the services covered by the application for registration, constitutes a ground which is included in the contested decision for the sake of completeness. It is apparent from the case-law that, even if a ground proves to be erroneous, that cannot justify the annulment of the measure which it affects if it is included for the sake of completeness and if other grounds exist which are sufficient to justify the measure (see judgment of 30 April 2013 in Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, EU:T:2013:225, paragraph 27 and the case-law cited).

52 It follows from the foregoing that the first part of the plea must also be rejected as unfounded.

54 Under Article 87(2) 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.

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

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Blackrock v OHIM (SO WHAT DO I DO WITH MY MONEY) (Judgment) [2015] EUECJ T-609/13 (29 January 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T60913.html Cite as: EU:T:2015:54, [2015] EUECJ T-609/13, ECLI:EU:T:2015:54

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