Trademarks - Community trademark

Meredith Corp v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM): General Court of the European Union (Fourth Chamber) (Judges Pelikanova (President), Jurimae (Rapporteur) and Van der Woude): 7 September 2011

On 18 September 2008, the applicant, Meredith Corp., filed an application for registration of a Community trademark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) 40/94 (on the Community trademark), as amended.

The trademark for which registration was sought was the word sign 'BETTER HOMES AND GARDENS'. The goods and services in respect of which registration was sought were in Classes 16, 35 and 36 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of Registration of Marks, as revised and amended.  

By decision of 5 March 2009, the examiner, pursuant to article 7(1)(b) of reg 40/94, firstly, allowed registration of the mark applied for in respect of the goods in Class 16 and certain goods or services in Class 35 and, secondly, refused registration for the ‘auctioneering services’ in Class 35 and the services in Class 36. The applicant filed a notice of appeal against that decision in so far as it concerned solely the services in Class 36 of the Nice Agreement.

By decision of 23 September 2009 (the contested decision), the Second Board of Appeal of OHIM dismissed the appeal, having held, inter alia, that the advertising slogan BETTER HOMES AND GARDENS did not constitute an indication of a particular business origin. Consequently, it held that the mark applied for could not be eligible for registration in respect of the services coming within Class 36 of the Nice Agreement. The applicant appealed.

The applicant alleged a breach of article 7(1)(b) of reg 207/2009 and contended that the General Court should annul the contested decision in so far as the Board of Appeal refused to register the mark applied for in respect of the services in Class 36 of the Nice Agreement. The appeal would be dismissed.

In the instant case, the Board of Appeal had acted correctly in law in finding that the expression BETTER HOMES AND GARDENS could not be accepted for registration in respect of the services which it covered and which came within Class 36 of the Nice Agreement. The Board had not merely excluded the possibility that the mark applied for could be registered on the sole ground that it constituted an advertising slogan.

Indeed, it was after examining the possible distinctive character of that slogan that the Board of Appeal had formed the view, taking account, first, of the fact that the relevant public would perceive the word sign BETTER HOMES AND GARDENS as a banal, informative and laudatory advertising slogan of the services in Class 36 of the Nice Agreement, and, second, of the possibility that the applicant’s competitors might legitimately seek to use it in connection with the marketing of their own services, that the mark applied for would not allow for identification of those services as coming from a specified undertaking.

Since the mark applied for was not particularly original or resonant, and did not require at least some interpretation or thought on the part of the relevant public, it had to be held that that mark was devoid of distinctive character within the meaning of article 7(1)(b) of reg 207/2009.

It followed that the Board of Appeal had not erred 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 reg No 207/2009 (see [23]-[24], [29] of the judgment).