In the appeal C- 92/10 before the ECJ for the trademark “BEST BUY” (with one B), Media- Saturn claimed that the General Court (GC) erred in law and was incorrect in its interpretation of the absolute ground for refusal of registration in respect of trade marks which are devoid of any distinctive character laid down in Article 7(1)(b) of CTMR. The appeal consists of three parts.
First, the appellant claimed the GC had failed to take account the minimum of difference between the case object of another proceedings for the trademark “BEST BUY” (see T-122/01) and the present case regarding where the word element ‘BEST BUY’ is formed only after a pause for thought (could be seen as “est buy” or “best uy”) and as such, may still be capable of guaranteeing the origin of goods or services. The Court rejected this first claim as a factual assessment which cannot be reviewed under appeal.
Second, the appellant claimed the GC had failed to carry out an overall assessment of the mark, from which it could not be excluded that the sum of elements ineligible on their own for protection would result in a mark eligible for protection when viewed as a whole. The Court rejected it on the grounds that it constituted a new claim presented for the first time; the appellant had not contested before the GC the lack of consideration by the Board of appeal as regards the question whether or not a complex mark has distinctive character must depend on an assessment of the mark as a whole.
Third, the appellant claimed the GC had used an excessively strict criterion in its assessment of distinctiveness when holding that it was sufficient that the mark be perceived ‘principally’ as an advertising slogan in order for the refusal of registration laid down in Article 7(1)(b) to apply.
The Court rejected the claim and held that the conclusion reached by the GC, through a factual assessment which cannot be reviewed under appeal, that the sign would lack distinctiveness because it will not be perceived at all as an indication of commercial origin is not incompatible with the precedents of the Court holding that such a mark can be perceived by the relevant public both as an advertising slogan and as an indication of commercial origin. Furthermore, the GC having sufficiently rejected the importance of the graphical aspects (par. 27 to 29), did not have to provide further reasons as of why the relevant consumer would perceive exclusively the sign as a promotional message (good price/quality value), this assessment being the result of the conclusions of the precedent BEST BUY judgment also applicable to the facts in question.