Best Buy Fails to Prove Distinctiveness Through Use

Their applications (filed on 4 May 2010) were initially refused on the grounds that the word mark BEST BUY was inherently descriptive and devoid of distinctive character. Their BEST BUY device was also refused as being inherently descriptive and devoid of distinctive character and the Hearing Officer also considered that the yellow swing tag device was unlikely to alter the public’s perception of the trade mark.

In the Appointed Person’s decision, Best Buy did not challenge these initial findings. Instead, the Appeal focuses on the Hearing Officer’s findings in relation to the evidence of use filed to support the claim that the trade mark had acquired distinctiveness through use.

Best Buy’s evidence fell into three types and included:

1. Press articles - these related to the joint venture between Best Buy and Carphone Warehouse;
2. Publicity - consisted of Best Buy’s media campaign surrounding the launch of their first retail store; and
3. Their social media presence.

Best Buy argued that the Hearing Officer had erred in the conclusions reached on the basis of the evidence filed.

In relation to the press articles, Best Buy had included articles from the Guardian and Financial Times online which reported on the joint venture with Carphone Warehouse and their plans to open stores in the UK. There was also Best Buy’s own press release on this which appeared on their UK website. Evidence also included staff recruitment drives in Thurrock and Southampton. The Hearing Officer considered that these articles may have been read by the general public but were more likely to be directed to other retailers with similar goods in the UK, especially given the main focus was on the joint venture.

In terms of the extent of the articles, none were for a sustained widespread advertising campaign aimed at the general public. The Hearing Officer concluded that the level of national exposure was very low and would not provide a re-education of the average consumer as to the provenance of the mark such that they would exclusively associate it with Best Buy. On considering this point, the Appointed Person viewed this evidence as, at best, background material and the Hearing Officer had not erred in her conclusion by affording them insufficient weight.

With regard to the evidence provided showing the publicity surrounding the store opening, this consisted of a significant distribution of leaflets to local people in Thurrock, poster and billboard campaigns, adverts on local radio stations and a full page advert in the Metro (London’s free paper) on the day the first store opened. The Hearing Officer viewed this evidence as having a very limited geographical reach and the evidence provided was insufficient to demonstrate acquisition of distinctive character on a national scale. The Appointed Person again agreed with the Hearing Officer’s assessment of the evidence.

Evidence on Best Buy’s social media presence included print outs from Best Buy’s website and its activities on Facebook, Twitter, Flickr and YouTube, all of which showed their trade marks. The Hearing Officer was criticised for not taking into account this evidence. However, the Appointed Person confirmed that:

the duty to give reasons cannot be turned into an intolerable burden and not every factor needs to be identified and explained.

Best Buy also provided a statement from Interbrand Design Forum stating that of the most valuable US retail brands in the US in 2009, BEST BUY was number two. The Hearing Officer said that this evidence related to the US and was not relevant for the UK.

Despite the arguments and evidence put forward by Best Buy’s attorney, the appeal was unsuccessful.

This case reinforces the importance of good and relevant evidence in cases of distinctiveness acquired through use. In particular, the significance of use throughout the UK to support a claim.