BEST BUY refers to advantageous relation between price and market value

European Union
In Media-Saturn-Holding GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case C-92/10 P, January 13 2011), the Court of Justice of the European Union (ECJ) has held that the trademark BEST BUY lacked distinctive character.
 
On June 23 2006 German company Media-Saturn-Holding GmbH filed an application for the registration of the word and device mark BEST BUY for goods and services in Classes 1, 2, 5 to 12, 14 to 17, 20 to 22, 28, 35, 38 and 40 to 42 of the Nice Classification:
 
The OHIM examiner rejected the application on the grounds that the mark consisted of ordinary English terms which referred exclusively to the existence of an advantageous relation between the price of the products and services at issue and their market value. The Fourth Board of Appeal of OHIM upheld the decision, finding that the mark lacked distinctiveness.  
 
On December 15 2009 the General Court took the same position, stating that the mark would not be perceived as an indication of the commercial origin of the goods and services, especially given the large range of goods and services involved. The graphic presentation of the mark did not alter these findings, because:
  • the rectangle surrounding the words ‘best buy’ was a simple shape which did not confer additional distinctive character; and
  • the relevant public would understand, without any effort, that the letter ‘B’ was part of both ‘best’ and ‘buy’ (for further details please see “General Court does not buy BEST BUY”).  
Before the ECJ, Media-Saturn alleged that consumers would recognise the words ‘best buy’ only after reflection, as the exact word element of the mark was either ‘estbuy’ or ‘bestuy’. However, the ECJ stated that this was a question of facts; it could not consider this issue as it can review only points of law.
 
Further, the ECJ concurred with Media-Saturn’s argument that the General Court had failed to make a global assessment of the distinctiveness of the mark by taking all its components into account. However, this claim was inadmissible as Media-Saturn had not criticised the Fourth Board of Appeal for not making a global assessment before the General Court.
 
The action was thus dismissed.
 
Considering the graphic configuration of the mark, it may be argued that the ECJ took a very strict approach in this case - although the graphic elements of the mark may also be said to be minimal.
 
Surprisingly, Media-Saturn did not try to rely on its longstanding and extensive use of BEST BUY, or on the recognition of the mark on the market. BEST BUY is not a newcomer, and its commercial ‘aura’ could have been a useful argument in this case.
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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