A slogan has a correlation
Gerecht EU 7 september 2011, Zaak T-524/09 (Meredith Corp tegen OHIM)
Gemeenschapsmerkaanvrage woordmerk BETTER HOMES AND GARDENS mist onderscheidend vermogen voor tijdschiften en boeken die gaan over huizen en tuinen. Het is niet bepaald origineel of vraagt van het publiek interpretatie of extra gedachten. Was het een "advertising slogan", dan is het gebruikelijk dat er een correlatie tussen de aard van het product en het merk gaat. Afwijzing van de klacht.
24 Since the mark applied for is not particularly original or resonant, and does not require at least some interpretation or thought on the part of the relevant public, within the terms of paragraph 57 of the judgment in Audi v OHIM, cited in paragraph 11 above, it must be held that that mark is devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. The Board of Appeal for that reason acted correctly in law in finding, in paragraph 18 of the contested decision, that the expression BETTER HOMES AND GARDENS could not be accepted for registration in respect of the services which it covers and which come within Class 36 of the Nice Agreement.
26 First, in so far as the applicant submits that the expression BETTER HOMES AND GARDENS is not an advertising slogan, to the extent to which a slogan usually has a correlation with the nature of the products being sold, whereas a mark is composed, as in the present case, of an adjective and common names, and, therefore, that the Board of Appeal was wrong to examine the mark applied for in the light of the case-law applicable to advertising slogans, that argument must be rejected as unfounded. On the one hand, to the extent to which, as the Board of Appeal correctly noted in paragraph 18 of the contested decision, the expression BETTER HOMES AND GARDENS will be perceived by the relevant public as a simple and direct informative and laudatory message aimed at promoting the services covered by the mark applied for, the Board of Appeal did not commit an error of assessment in referring to that expression as an advertising slogan. On the other hand, and in any event, even if it were to be assumed that the Board of Appeal did commit an error of assessment in that regard, that would have no bearing on the conclusion set out in paragraph 24 above to the effect that that expression has no distinctive character.
27 Second, it is necessary to reject as unfounded the applicant’s alternative argument that the Board of Appeal applied, in paragraph 14 of the contested decision, set out in paragraph 18 above, an excessively severe criterion in the examination of the distinctive character of the sign for which registration is sought. In that regard, the applicant submits that the Board of Appeal was wrong to take the view that an advertising slogan can be registered as a mark only if, first, it is perceived ‘immediately’ as an indication of the commercial origin of the services which it designates, and, second, the relevant public distinguishes ‘without any possibility of confusion’ the services covered by that mark from those which have a different commercial origin. Indeed, that assessment of the Board of Appeal does not, in any event, call into question the conclusion according to which, as is clear from paragraphs 19 to 22 above, the Board of Appeal examined in this case, in accordance with the case-law, whether or not the mark applied for had a sufficiently distinctive character to be registered.
28 Third, the applicant’s argument that the Court of Justice’s reasoning in the judgment in Audi v OHIM, cited in paragraph 11 above, should, in essence, lead the General Court to annul the contested decision, must be rejected as unfounded. In paragraph 47 of that judgment, the Court of Justice noted that the mark VORSPRUNG DURCH TECHNIK, which means, inter alia, ‘advance or advantage through technology’, had a distinctive character for the relevant public since, as the General Court had held, that mark could have ‘a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered’. However, unlike the mark VORSPRUNG DURCH TECHNIK, the mark here applied for, which does not make possible identification in this case of the commercial origin of the services which it covers, has no distinctive character, as has been stated in paragraph 24 above.
29 Fourth, in so far as the applicant claims that the mark applied for operates as the title for a magazine published by it, that that mark is used for services which it categorises as ‘ancillary’ and that that mark was accepted by OHIM for the registration of goods and services other than those covered by the contested decision, those arguments must be rejected as ineffective. To the extent to which, as is clear from the case-law set out in paragraph 13 above, the distinctive character of a mark is assessed solely in the light of the goods or services for which registration is sought, the fact that the expression BETTER HOMES AND GARDENS had been registered for goods or services other than those examined in the contested decision, or that it had been used either as a title for a magazine or as a designation for other services, which the applicant, moreover, does not identify, is irrelevant to the conclusion set out in paragraph 24 above, according to which the Board of Appeal did not err in forming the view, with regard to the services in Class 36 of the Nice Agreement which the relevant public understands as aiding in the acquisition of better homes and gardens, that the mark applied for did not have any distinctive character within the terms of Article 7(1)(b) of Regulation No 207/2009.
