General Court does not buy BEST BUY

European Union

In Media-Saturn-Holding GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-476/08, December 15 2009), the General Court has upheld a decision of the Board of Appeal of OHIM in which the latter had refused to register the mark BEST BUY for goods and services in 25 classes of the Nice Classification on the grounds that it lacked distinctiveness under Article 7(1)(b) of the Community Trademark Regulation (40/94).

In 2006 Media-Saturn-Holding GmbH filed an application for the registration of BEST BUY (and design) for various goods and services. The OHIM examiner refused the application on the basis of Article 7(1)(b), stating that the expression 'best buy' consisted of common English terms which referred solely to a bargain in relation to the designated goods and services. Confirming the examiner’s decision, the Board of Appeal of OHIM held that BEST BUY was devoid of distinctive character. Saturn appealed to the General Court.  

Before the court, Saturn claimed that:

  • the mark applied for had the minimum degree of distinctive character required;
  • its graphical presentation was not common in advertising, particularly in view of the original presentation of the letter 'B' at the beginning of the words 'best' and 'buy'; and
  • therefore, the public would perceive the mark as indicating the commercial origin of the goods and services.

Saturn also alleged that the examiner had not submitted evidence showing that the expression 'best buy' was commonly used in advertising and was devoid of distinctive character.

Rejecting Saturn’s appeal, the court referred to its decision in Best Buy Concepts v OHIM (Case T-122/01), in which it was held that:

  • the mark BEST BUY (and design) consisted of two common English words referring to an advantageous relation between the price of the designated services and their market value;
  • the relevant public would immediately perceive the expression 'best buy' as a promotional formula or slogan indicating that the services were offered as the best purchase or the best bargain; and
  • the fact that the two elements were juxtaposed did not mean that the omission of an article was sufficient to make it an inventive expression which would be liable to give it a distinctive character (for further details please see "'Best Buy' not distinctive rules Court of First Instance").

In the present case, the court stated that the public would consider the expression as an indication of the advantageous relation between the quality and the price of the goods or services, and not as an indication of the commercial origin of those goods and services. According to the court, the fact that the application was filed for a broad range of goods and services emphasized the lack of distinctive character of the expression.

The court also stated that the design consisted of a simple geometric shape which highlighted the commercial nature of the message and did not give it additional distinctive character. Regarding the prominence of the letter 'B', the court stated that, despite the fairly unusual presentation of BEST BUY, promotional slogans in supermarkets usually appeared with a device. The fact that the letter 'B' was placed at the beginning of both words in the mark was not sufficient to give it distinctive character and the public would understand that the letter 'B' was common to both words. The use of an ordinary font did not add any distinctive character either.

Regarding Saturn’s argument in respect of the lack of evidence of the alleged ordinary character of the mark, the court held that the Board of Appeal had demonstrated to the requisite legal standard that there was a lack of distinctive character in relation to the designated goods and services. The court stated that since Saturn claimed that the mark was distinctive, despite the analysis of the board based on clear and convincing reasoning, it was for Saturn to provide specific and substantiated information showing that the mark had a distinctive character per se, given that Saturn had a better knowledge of the market.

This decision follows the reasoning of the court in Best Buy Concepts, confirming that a promotional message framed in a rectangle does not have sufficient distinctive character to be a badge of origin. The court put the use of the mark applied for into a commercial context by highlighting the fact that promotional slogans used in supermarkets are usually combined with a device.

The decision also raises the issue of applications by retailers to protect a mark in relation to numerous goods and services. The court considered that filing for a broad range of goods and services emphasized the lack of distinctive character of the mark. It would be interesting to know why the variety of the designated goods and services was said to have an influence on the degree of distinctiveness of the mark at the time of the filing.

Emilie Scheffer and Chris McLeod, Hammonds LLP, London

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