'Best Buy' not distinctive rules Court of First Instance

In Best Buy Concepts Inc v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld a decision to reject registration of a trademark made up of a yellow price tag design featuring the words 'best buy'. The court stated that the principles in the BABY-DRY Case, suggesting that a mark's distinctive character be assessed with reference to the mark as a whole, do not preclude an examination of the distinctiveness of the differing elements making up the mark.

Best Buy Concepts, a US company, applied to register as a Community trademark a sign made up of a price tag design featuring the words 'best buy' followed by the registered trademark sign '®'. The OHIM's Board of Appeals rejected the application finding that it was devoid of any distinctive character under Article 7(1)(b) of the Community Trademark Regulation and, in addition, descriptive pursuant to Article 7(1)(c). Best Buy appealed to the Court of First Instance.

The Court of First Instance upheld the board's decision and rejected the application. It only examined the proposed registration under Article 7(1)(b) and concluded that, by finding this absolute ground of refusal applicable, it was unnecessary to consider grounds for refusal under Article 7(1)(c). Although this reasoning is based on the decision of the European Court of Justice (ECJ) in Procter & Gamble v OHIM (the BABY-DRY Case), it still presents a number of difficulties. It should be remembered that in the BABY-DRY Case the ECJ found that the trademark was not descriptive and, when the case was returned to the OHIM, the mark was objected to a second time on the grounds that it lacked distinctiveness. Even though this was finally solved by a withdrawal of the objections so that the applicant did not have to appeal to the ECJ for a second time, it seems unsatisfactory that applicants may be forced into going through the appeal process twice for the same registration.

In reaching its conclusion that Best Buy's application lacked distinctiveness, the Court of First Instance noted that trademarks consisting of signs or indications that are also used as advertising slogans are not excluded from registration per se by virtue of such use. However, in the case at hand, the court found that the phrase 'best buy' was a sign commonly used in connection with the marketing of the goods and services covered by Best Buy's application and as such was excluded from registration.

The court also stated that the principles in the BABY-DRY Case, suggesting that a mark's distinctive character be assessed with reference to the mark as a whole, do not preclude an examination of the distinctiveness of the differing elements making up the mark. This opens the door to the examination of these elements in terms of their individual distinctiveness and allows the courts - as in the instant case - to find a sign non-distinctive in relation to the word element alone, without regard to the graphic or colour elements.

The court further stated that neither (i) the omission of an indefinite or definite article (such as 'a' or 'the') in the word element of the sign, nor (ii) the addition of the registered trademark sign '®' made the proposed registration sufficiently distinctive.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna