Judgments nº T-122/01 of Court of First Instance of the European Communities, Thursday July 03, 2003

• Resolution Date: Thursday July 03, 2003
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-122/01

JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber)

3 July 2003 (1) (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) In Case T-122/01,

Best Buy Concepts Inc., established in Eden Prairie, Minnesota (United States), represented by S. Rojahn, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,

defendant,

APPLICATION for annulment of the decision of the Third Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 21 March 2001 (Case R 44/2000-3) concerning an application for registration of a figurative mark containing the word mark ‘best buy’ as a Community trade mark,

THE COURT OF FIRST INSTANCE

OF THE EUROPEAN COMMUNITIES (Second Chamber),

composed of: N.J. Forwood, President, J. Pirrung and A.W.H. Meij, Judges,

Registrar: D. Christensen, Administrator,

having regard to the written procedure and further to the hearing on 25 February 2003,

gives the following

Judgment

Background to the dispute

1.

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’).

2.

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):

3.

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;

- ‘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.

4.

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.

5.

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.

6.

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

7.

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.

8.

The applicant claims that the Court should:

- annul the decision of the Board of Appeal;

- order the defendant to pay the costs.

9.

The Office contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

10.

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

11.

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...