Proprietor may be unhappy because BE HAPPY is not a trade mark

The General Court has issued another judgment relating to the controversial issue of promotional statements that may also serve as trade marks in the Joined Cases T-707/13 and T-709/13, shattering the dreams of happiness of the CTM proprietor Steinbeck GmbH: the Court confirmed the cancellation decisions of the 'BE HAPPY' marks on the absolute grounds provided by Article 52.1.a) in combination with Article 7.1.b) of Regulation 207/2009.

Steinbeck registered with OHIM two word marks for the sign 'BE HAPPY', the first in 2007 for goods in class 16, 21, 28 and 30 and the second in 2010 for goods in class 9, 11 and 18.

Be happy with Steinbeck

In 2012, the company Alfred Sternjakob GmbH & Co. KG applied for invalidity of the BE HAPPY CTMs on the grounds that they lacked distinctive character and were descriptive of the characteristics of the goods they covered, according to Articles 7.1.b) and 7.1.c) of Regulation 207/2009 respectively .

The Cancellation Division upheld the requests for invalidity, and the Board of Appeal confirmed the decision that the registrations were null and void because the marks were not distinctive.

In particular, the Board of Appeal recognised that the relevant public, whose perception is paramount to establishing whether a mark is distinctive, comprised not only English-speaking consumers but also those speaking German, in that the marks consisted of a basic and common English words which, on their own and in their conjunction, could be easily understood by both categories of consumers. In addition the sentence “be happy” is a fundamental component of the lyrics of the very famous song 'Don't worry, be happy', which is common knowledge.

Have you told me
to BE HAPPY?

Then the Board of Appeal underlined that the BE HAPPY marks complied with the rules of English syntax and grammar and their meaning resulted in the plain exhortation to - be happy! No originality or unusual structure was present to justify a conclusion that the marks had some fancifulness which conferred distinctiveness. On the contrary, the public would perceive the CTMs as advertisement statements conveying positive emotions and inciting to purchase the goods they covered.

The Board of Appeal went on and specified that such a positive invitation to buy, as provided by the contested BE HAPPY CTMs, could apply to any provider of any goods and, therefore, to any purchasing situation. Likewise, the CTMs evoked the joyful feeling for shopping and using the goods in respect of which protection was claimed, so that consumers could directly link 'BE HAPPY' to those types of goods. In the view of all these arguments the BE HAPPY CTMs could not identify and distinguish Steinbeck's goods in the market.

Steinbeck appeal to the General Court presenting a sole plea in law based on infringement of Article 52.1.a) in combination with Article 7.1.b) of Regulation 207/2009.

The Court sided with the Board of Appeal and reiterated its conclusion in regard to both the relevant public's identification and perception of the marks, not challenged by the parties, and the customary nature and structure of the CTMs which invited the consumer to be happy.

In addition, the Court underlined that, although the contested marks were not semantically descriptive of the goods they covered, this nonetheless failed to confer upon them distinctiveness. This was even more so given that BE HAPPY could describe the commercial value of such goods as deriving from an advertisement statement which caused the consumer to shop for them.

The General Court had to deny that the BE HAPPY CTMs could fall within the case-law admitting that a promotional formula can also serve as commercial origin identifier if it implies some interpretation or a cognitive process on the part of the relevant public. This was still confirmed despite the fact that the signs were short enough to be easily remembered and that for a sign to be distinctive it is not necessary that they are particularly original or fanciful.

However, besides constituting a promotional formula, these CTMs produced no resonance in the perception of the relevant consumers as is required for the purposes of the mentioned case-law. The Court concluded that the BE HAPPY marks were devoid of distinctive character because of their laudatory and promotional nature, this assessment being also unchallengeable in respect of Steinbeck's further arguments.

Significantly, the Court had to remind that the assessment of the distinctive character is undertaken within an abstract and in a prioriexamination aim at establishing whether the mark can lead consumers to distinguish the products and services it covers in the market. Consequently, it dismissed Steinbeck's claim that because of the placement of the BE HAPPY sign on the goods concerned, in a typical position for trade marks, consumers would have perceived them as commercial source identifiers.

The General Court finally rejected the argument that the Board of Appeal applied the case-law on mere slogan marks that are devoid of distinctiveness and had not instead applied the case-law which considers that a slogan can at the same time be a proportional formula and a trade mark, provided that the sign can serve identify and distinguish the goods and services of an undertaking in the market. The Court referred again to the case-law requesting that the slogan be more than a customary promotional message but that it also show a certain originality to serve as a trade mark.