CELEX: 62001TJ0122
Community trade mark
Figurative mark containing the word mark best buy
Absolute ground for refusal
Distinctive character
Article 7(1)(b) of Regulation (EC) No 40/94

Background to the dispute
On 7 May 1999, the applicant filed an application under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community
trade mark (OJ 1994 L 11, p. 1), as amended, for registration of a Community figurative trade mark at the Office for Harmonisation
in the Internal Market (Trade Marks and Designs) (
the Office).
The trade mark in respect of which registration was sought is the mark reproduced below with the colours yellow (background)
and black (letters, contour, circle):
The services in respect of which registration of the mark was sought are in classes 35, 37 and 42 of the Nice Agreement concerning
the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised
and amended, and, for each of those classes, correspond to the description:
─
Business management consultancy, including giving assistance and advice for the establishment and management of retail stores
in the field of major household appliances, photographic equipment, telecommunication equipment, video equipment, audio equipment,
personal computers and other home office products and entertainment software, including compact discs, pre-recorded audio
and video cassettes and computer software, and related merchandise in class 35;
Business management consultancy, including giving assistance and advice for the establishment and management of retail stores
in the field of major household appliances, photographic equipment, telecommunication equipment, video equipment, audio equipment,
personal computers and other home office products and entertainment software, including compact discs, pre-recorded audio
and video cassettes and computer software, and related merchandise in class 35;
─
Installation and maintenance of automotive audio equipment, major household appliances, photographic equipment, video equipment,
audio equipment, telecommunication equipment, personal computer and other home office products, and related merchandise in class 37;
Installation and maintenance of automotive audio equipment, major household appliances, photographic equipment, video equipment,
audio equipment, telecommunication equipment, personal computer and other home office products, and related merchandise in class 37;
─
Technical consultancy and advising in the establishment of retail stores in the field of major household appliances, photographic
equipment, telecommunication equipment, video equipment, audio equipment, personal computers and other home office products
and entertainment software, including compact discs, pre-recorded audio and video cassettes and computer software, and related
merchandise in class 42.
Technical consultancy and advising in the establishment of retail stores in the field of major household appliances, photographic
equipment, telecommunication equipment, video equipment, audio equipment, personal computers and other home office products
and entertainment software, including compact discs, pre-recorded audio and video cassettes and computer software, and related
merchandise in class 42.
By decision of 19 November 1999, the examiner refused the application under Article 38 of Regulation No 40/94 on the ground
that the mark applied for was caught by Article 7(1)(b), (c) and (d) of Regulation No 40/94.
On 22 December 1999, the applicant filed an appeal at the Office against the examiner's decision in accordance with Article
59 of Regulation No 40/94.
By decision of 21 March 2001 (
the contested decision), the Board of Appeal dismissed the appeal. It found, essentially, that the sign was devoid of any distinctive character,
that it was descriptive and, therefore, came within the scope of Article 7(1)(b) and (c) of Regulation No 40/94.
Procedure and forms of order sought
By application lodged at the Registry of the Court of First Instance on 4 June 2001, the applicant brought the present action.
On 24 August 2001, the Office lodged its response.
The applicant claims that the Court should:
─
annul the decision of the Board of Appeal;
annul the decision of the Board of Appeal;
─
order the defendant to pay the costs.
order the defendant to pay the costs.
The Office contends that the Court should:
─
dismiss the action;
dismiss the action;
─
order the applicant to pay the costs.
order the applicant to pay the costs.
Law
In its application, the applicant makes two pleas in law, alleging infringement of Article 7(1)(b) and (c), respectively,
of Regulation No 40/94.
First plea: infringement of Article 7(1)(b) of Regulation No 40/94
Arguments of the parties
The applicant maintains that the public perceives the mark quickly and in its entirety, without dissecting it into its component
parts. It submits that the Office has not taken into account the original character of the elements making up the figurative
mark and stresses that its application concerns services aimed solely at professionals.
The elements making up the mark, particularly the words forming a grammatically incorrect neologism, are unusual for the services
in question. In addition, the target public does not usually expect a mark in the form of a price tag for services.
The applicant adds that the Office did not take account of the registration of the sign as a trade mark in Germany and France.
The Office begins by disagreeing with the applicant's arguments concerning the overall impact of the mark. It submits that
the Board of Appeal simply focused on the word aspect of the mark which characterised it and also examined its figurative
elements, as part of an overall assessment of the mark.
Second, the Office submits that the services specified in the application for a Community trade mark were indeed taken into
account by the Board of Appeal, which found that the semantic content of
best buy necessarily conveyed the impression that it characterised the service offered, i.e., that it offered the most advantageous
relation between price and value, including for traders who are clients of traders operating in the resale sector.
The Office submits, third, that neither the yellow colour nor the hexagonal shape is distinctive in character, since they
are generally used in the marketing of goods and services.
The Office submits, fourth, that the usual meaning of the word combination
best buy is understood immediately by people familiar with the English language and notes that the word
buy is commonly used as a noun.
Lastly, the Office submits that the national registrations relied on come from countries where English is not the language
spoken, where the mark could well be distinctive, without that necessarily being the case throughout the Community.
Findings of the Court
Under Article 7(1)(b) of Regulation No 40/94,
trade marks which are devoid of any distinctive character are not to be registered. Moreover, Article 7(2) of Regulation No 40/94 states that
[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
As the Court of First Instance has already held, the marks referred to in Article 7(1)(b) of Regulation No 40/94 are, in particular,
those which do not enable the relevant public to repeat the experience of a purchase, if it proves to be positive, or to avoid
it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned (Case T-79/00
Rewe-Zentral
v
OHIM (LITE)
[2002] ECR II-705, paragraph 26). Such is the case for
inter alia
signs which are commonly used in connection with the marketing of the goods or services concerned.
However, registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications
of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such
use (see, by analogy, Case C-517/99
Merz & Krell
[2001] ECR I-6959, paragraph 40).  A sign which fulfils functions other than that of a trade mark in the traditional sense
of the term is only distinctive for the purposes of Article 7(1)(b) of Regulation No 40/94 however if it may be perceived
immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public
to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different
commercial origin.
A sign's distinctiveness can only be assessed, firstly, by reference to the goods or services in respect of which registration
is sought and, secondly, on the basis of the perception of that sign by the relevant public.
In the present case, the Court notes, firstly, that the business management consultancy and technical assistance and advice
for the establishment and management of specialised stores coming under classes 35 and 42 are aimed at a professional public,
whilst the installation and maintenance services are intended for the general public.
The applicant, in an effort to clarify its position in relation to the relevant public, maintained at the hearing that it
was necessary to give a narrow interpretation to the list of services placed in class 37 and to limit it to performance of
services by professionals for professionals. On this point, the Court notes, firstly, that some of the services at issue,
including maintenance of car and home audio equipment, may only be provided to the ultimate consumer. Secondly, such an interpretation
is tantamount to restricting the list of goods and services; it may be restricted only in accordance with certain detailed
rules, however, and an application to do so must be submitted to the Office (Case T-173/00
KWS Saat
v
OHIM (shade of orange)
[2002] ECR II-3843, paragraphs 11 and 12).  Consequently, this argument cannot be accepted.
In addition, it must be pointed out that, in the light of the nature of some of the services in question, the awareness of
part of the relevant public will be high, given the relatively high technical level and cost of the services. Their awareness
is liable to be relatively low, on the other hand, when it comes to purely promotional indications, which well-informed consumers
do not see as decisive (see, to that effect, Case T-130/01
Sykes Enterprises
v
OHIM (REAL PEOPLE, REAL SOLUTIONS)
[2002] ECR II-5179, paragraph 24).
Accordingly, the public should be taken to be normally well-informed and aware for all the services covered. Since the word
mark
best buy is composed of elements from the English language, the relevant public is the English-speaking public, or even a public which
is not English-speaking but has a sufficient grasp of the English language.
Second, as regards the assessment of the distinctive character of the mark claimed, it is appropriate, in the case of a complex
mark, to examine it in its entirety. That is not incompatible, however, with a prior, separate examination of the different
elements which make up the mark.
As regards, first, the word mark
best buy, the Court notes that it is composed of ordinary English words which clearly indicate an advantageous relation between the
price of the services covered by the application and their market value.
It is, therefore, perceived immediately by the relevant public as a mere promotional formula or a slogan which indicates that
the services in question offer the best
buy possible in their category or the
best price-quality ratio, as noted by the Board of Appeal in paragraph 17 of the contested decision.
The argument presented by the applicant at the hearing which acknowledged
the indubitable semantic content of the word mark in question but maintained that it tells the consumer nothing about the content or the nature of the services
offered is irrelevant. For a finding that there is no distinctive character, it is sufficient to note that the semantic content
of the word mark, the principal and dominant element of the mark in question, indicates to the consumer a characteristic of
the service relating to its market value which, whilst not specific, comes from information designed to promote or advertise
which the relevant public will perceive first and foremost as such rather than as an indication of the commercial origin of
the services (see, to this effect,
REAL PEOPLE, REAL SOLUTIONS
, paragraphs 29 and 30). In addition, the mere fact that the semantic content of the word mark
best buy does not convey any information about the nature of the services concerned is not sufficient to make that sign distinctive.
Moreover, the applicant, who merely affirmed that the term
buy was imprecise and vague, did not indicate which meaning of the word mark in question might be retained by the relevant public,
other than that indicating an advantageous relation between the price and market value of the services. Nor did it state whether
the word mark could be used in a manner other than in the context of promotion or marketing. Contrary to what the applicant
maintains, the meaning of the word mark at issue may relate as much to a service provided as to the distribution of products
or services which that service is intended to promote.
Moreover, the fact that the two elements constituting the word mark
best buy are juxtaposed does not mean that the mere omission of an article in its structure (
a best buy or
the best buy) is sufficient to make it a lexical invention liable to give it a distinctive character or to give it an original character
which, in any event, is not a criterion for assessing the distinctiveness of a sign (see, to this effect, Case T-87/00
Bank für Arbeit und Wirtschaft
v
OHIM (EASYBANK)
[2001] ECR II-1259, paragraph 40).
Turning to the perception of the shape and colour of the price tag by the relevant public, the Court notes that, as stated
by the Board of Appeal in paragraph 19 of the contested decision, coloured price tags are commonly used in trade for all kinds
of goods and services. Consequently, the applicant's argument that such a tag would attract the public's attention is inopportune.
As for the element
®, the Court notes that the presence of this type of element alongside other elements is not sufficient to confer distinctive
character on a mark viewed in its entirety.
Since the mark claimed is composed of the assembly of the elements examined above, it is appropriate to consider whether the
mark is distinctive when viewed as a whole.
In the light of the points discussed above, it appears that the mark claimed, as a whole, is merely composed of elements which,
when examined separately, are devoid of distinctive character for the marketing of the services concerned. Nor is there any
interaction between these different elements which might confer a distinctive character on the whole.
The shape of a price tag is not liable to affect the meaning of the dominant word elements. Moreover, far from adding a distinctive
element, the shape is figurative and tends to reinforce the promotional character of the word elements in the minds of the
relevant public.
The trade mark applied for is therefore devoid of distinctive character in respect of the categories of goods and services
concerned.
As regards the prior registrations in Germany and France, the applicant was unable to provide any clarification of their scope
at the hearing. The Court notes that those registrations do not concern either a sign wholly identical to the sign at issue
here or similar goods or services.
In addition, as rightly pointed out by the Office, references to national registrations conferred by Member States which do
not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Community,
cannot be accepted as relevant in this case.
Lastly, it is appropriate to recall that, according to settled case-law, the Community trade mark regime is an autonomous
system and that the legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 40/94
(Case T-32/00
Messe München
v
OHIM (electronica)
[2000] ECR II-3289, paragraph 47, and Case T-106/00
Streamserve
v
OHIM (STREAMSERVE)
[2002] ECR II-723, paragraph 66).
The applicant's arguments based solely on the registrations in Germany and France therefore have no bearing on the issue.
In the light of all the foregoing considerations, the mark claimed is devoid of distinctive character in a large part of the
Community. The plea alleging infringement of Article 7(1)(b) of Regulation No 40/94 must therefore be rejected.
Accordingly, it is unnecessary to consider the plea alleging infringement of Article 7(1)(c) of Regulation No 40/94. In accordance
with settled case-law, it is sufficient that one of the absolute grounds of refusal applies for the sign to be ineligible
for registration as a Community trade mark (Case T-163/98
Procter & Gamble
v
OHIM (BABY-DRY)
[1999] ECR II-2383, paragraph 29, and Case T-19/99
DKV
v
OHIM (COMPANYLINE)
[2000] ECR II-1, paragraph 30).
The action must therefore be dismissed.
Costs
Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay
the costs if they have been applied for in the successful party's pleadings. Since the applicant has been unsuccessful and
the Office has asked for costs, the applicant must be ordered to bear its own costs and to pay those of the Office.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1.
Dismisses the application;
2.
Orders the applicant to pay the costs.
Forwood
Pirrung
Meij
Delivered in open court in Luxembourg on 3 July 2003.
H. Jung
N. Forwood
Registrar
President
–
Language of the case: German.