Smart Technologies ULC V/ OHIM
Court of Justice of the European Union (ECJ), July 12, 2012 :
- Parties : Smart Technologies ULC v / OHIM
- Subject Matter : Slogans - Distinctive Character
- Trademark : WIR MACHEN DAS BESONDERE EINFACH, German expression meaning " we make special (things) simple “.
The company Smart Technologies filed the application for the Community Trade Mark " WIR MACHEN DAS BESONDERE EINFACH " ("we make special (things) simple ") for IT / computer products in Class 9.
Following the rejection of the application by both the examiner and the Second Board of Appeal of OHIM, on the grounds that the mark applied for is devoid of distinctive character, the company Smart Technologies appealed to the Tribunal de Première Instance de l'Union Européenne (TPIUE) / European Court of First Instance (ECFI).
The ECFI held that " that the mere fact that a mark is perceived by the relevant public as a promotional formula is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character, and that such a mark can be perceived concomitantly by the relevant public both as a promotional formula and as an indication of the commercial origin of the goods or services concerned ".
It deemed that that the relevant public would be made up of “ German speakers who are specialists in the computer field “, and that the mark in respect of which registration is sought is an “ advertising slogan containing a laudatory message, which contains no unusual variations in regard to German rules of syntax and grammar ". The ECFI thus dismissed the appeal of the company Smart Technologies on the grounds that the trade mark filed is not distinctive.
The latter company subsequently appealed to the Court of Justice of the European Union (ECJ). It argued in particular that, in the present case, “ a lower level of distinctiveness than is generally required is sufficient to enable the trade mark applied for to be registered, given that the relevant public is a specialised public whose level of attention and knowledge is higher than that of the average consumer ".
After having acknowledged that the degree of attention of the relevant specialist public is higher than that of the average consumer, the Court held, however, “ that it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist ".
The Court thus dismissed the appeal.