What do “INVESTING FOR A NEW WORLD” and “SO WHAT DO I DO WITH MY MONEY” have in common?
Both are CTM applications which were rejected by OHIM
on the grounds of lack of distinctive character according to Article 7(1) b)
Inc saw its word trademarks rejected for the following services: 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’; and among
other in Class 36: ‘Investment management
services; investment advice; financial risk management; stock brokerage
services in the field of investment company shares; mutual fund brokerage
The relevant public is the English-speaking average
consumer and English-speaking professionals such as commercial undertakings
which are active in the fields of finance and investment. In
view of the nature of the services at issue, the level of attention of the
relevant public is ‘relatively high’ but relatively low with regard to
As regards the expression ‘investing for a new world’(T-59/14) it will be understood by the relevant
public, without any interpretative effort, as a laudatory message according to
which the services concerned were intended for a new world’s needs.
The services in question relate to financial investments
or related services and have a close link with the word ‘investing’. Therefore
the sign could not be an indication of the commercial origin of those services.
Furthermore, nothing in that expression, beyond its obvious promotional
meaning, would enable the public to memorise it easily and instantly as a
distinctive mark. It did not constitute a play on words and was not
imaginative, surprising or unexpected.
Furthermore, this analysis does not misconstrue the
judgment of 21 January 2010 in Audi v OHIM, C‑398/08 P, and in the case which gave rise to the
judgment in Audi v OHIM, the slogan in question was also widely known on account of
its use over a period of many years, which was not the case in this instance.
As regards the expression ‘so what do I do with my money’ (Case T-609/13) it does not have several meanings, nor
does it constitute a play on words, neither is it fanciful nor resonant and does
not contain any otherwise creative element and that, in the context of services
that have to do with money. That expression is straightforward, easy to
understand and in conformity with the rules of English grammar. It merely
raises a general question in the minds of consumers, inviting them to reflect
on their financial situation.
The General Court dismissed both appeals and upheld
the decisions of the Boards of Appeal.