In Wella v OHMI (TAME IT) [2009] EUECJ T-471/07, the Court of the First Instance (CFI) upheld the decision of the second board of appeal of OHIM ("the Board of Appeal") in part, refusing to grant territorial extension to the European community of the protection of the mark "TAME IT" in respect of essential oils, cosmetics and hair lotions.

The CFI found Article 149(1) of Council Regulation (EC) No 40/94 on the Community trade mark ("the Council Regulation"), as amended by Article 154(1) ("the Amended Council Regulation") provides that international registrations designating the European Community are to be subject to examination as to absolute grounds for refusal in the same way as applications for Community trade marks.

The Applicant had registered the word mark TAME IT with WIPO, for goods in class 3 of the Nice Agreement, covering 'soaps, perfumeries, essential oils, cosmetics, hair lotions, dentifrices'. The Applicant then requested an expansion to the European Community, pursuant to Article 3ter, of the Madrid Protocol, which the examiner refused ("the examiner's decision") on the ground that the trade mark TAME IT lacked distinctive character within the meaning of Article 7(1)(b) of the Council Regulation (Article 7(1)(b) of the Amended Council Regulation).

The Board of Appeal granted an appeal in part ("the contested decision") finding the words TAME IT were devoid of any distinctive character in relation to hair lotions, cosmetics and essential oils, because the relevant public, being an average English speaker consumer, would understand the expression as a purely promotional term. But no such connection existed between the mark TAME IT and soaps, perfumeries and dentrifices. The contested decision was appealed to the CFI by both parties.

The CFI cited Eurocool Logistik v. OHIM (EUROCOOL) in stating Article 7(1)(b) of the Council Regulation provides trade marks which are devoid of any distinctive character may not be registered because they are "regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question.".

The CFI went on to say that a mark is not automatically excluded from being registrable if it consists of signs used for advertising, provided it "may be perceived immediately as an indication of the commercial origin of the goods or services in question so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the proprietor of the mark from those of a different commercial origin."( Best Buy Concepts v, OHIM (BEST BUY)).

The CFI suggested that a mark would lack distinctive character, if "the semantic content of the word mark in question indicates to the consumer a characteristic of the product or service relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive at first glance as such, rather than as an indication of the commercial origin of the product or service in question"( Norma Lebensmittelfilialbetrieb v. OHIM (Mehr für Ihr Geld)). The distinctiveness of the mark must be assessed by reference to the goods and services in respect of which protection is sought, as well as in reference to the relevant public. Where a mark lacks distinctiveness in relation to some, but not all of the goods and services the Applicant seeks protection for, protection in relation to the goods that are distinctive is not precluded.

The court rejected the Applicant's argument that the main meaning of the verb "to tame" refers to the domestication of wild animals, and that therefore the advertising message of TAME IT won't be conveyed clearly and immediately. Therefore, the average consumer will perceive the mark TAME IT as an advertising message in the first instance, rather than as an indication of the commercial origin of the products in question.

The CFI concluded the mark TAME IT was devoid of distinctive character in respect of all the goods in question, and listed the following reasons: the fact that the mark contains a verb in the imperative does not give it distinctive character, as verbs in the imperative are common in advertising; that the Board of Appeal had not disregarded the overall design of the mark; that the Board of Appeal, in order to satisfy Article 7(1)(b) of the Council Regulation, did not need to refer to any examples of the use of the expression 'tame it' to designate the goods in question and that this did not show that the mark was capable of distinguishing the goods in question from those goods that have a different commercial origin; that the registrability of a sign as a Community mark must be assessed by reference only to the relevant rules; that OHIM is not bound by a decision given in a member state; that the sign, even when taken as a whole, would be perceived by the relevant public as a purely promotional message. The European Community designation was denied in respect of essential oils, cosmetics and hair lotions.