In Smart Technologies ULC v Office for Harmonisation in the Internal Market  C-311/11 P, the Court of Justice of the European Union (CJEU) has dismissed an appeal against a decision by the EU General Court that upheld a finding by the Board of Appeal of the Office For Harmonization for the Internal Market that the slogan WIR MACHEN DAS BESONDERE EINFACH (German for “we make special (things) simple”) was devoid of distinctive character in respect of various computer-related goods.
Smart Technologies filed a Community trademark (CTM) application for the slogan WIR MACHEN DAS BESONDERE EINFACH for various computer-related goods in Class 9. OHIM refused the application under Article 7(1)(b) of CTM Regulation 40/94/EEC (now replaced by 207/2009/EC) (CTMR) on the basis that it was devoid of distinctive character. OHIM’s Board of Appeal and the General Court upheld the refusal.
The General Court held that a mark consisting of an advertising slogan is devoid of distinctive character if it is liable to be perceived by the public as a mere promotional formula rather than as an indication of commercial origin. Dismissing the appeal, the General Court emphasised that the mark applied for consisted of five standard German words containing a laudatory message, without any unusual variations of German syntax or grammar. The inclusion of the word “wir” (we) did not negate the fact that the mark remained a mere slogan.
Smart Technologies appealed to the CJEU alleging that Article 7(1)(b) was infringed and that certain findings of fact were described erroneously as well-known by the General Court.
Smart Technologies argued that the General Court had applied the wrong criteria when assessing the distinctive character of the mark as it focused only on whether the mark is perceived merely as an advertising slogan when it should have focused on whether the mark, irrespective of its promotional function, possessed any distinctive character. The CJEU set out the evaluation criteria for distinctiveness, concluding that the General Court had correctly analysed the mark and considered whether the relevant public perceived the mark as an indication of the commercial origin of the goods.
Smart Technologies also argued that the judgment of the General Court was vitiated by an error of law as the subcategory of “slogan” in which the General Court placed the mark did not appear in the CTMR. The CJEU found that the General Court, by describing the mark as a slogan, did not create a special subcategory or separate category from other marks even though the term “slogan” was not used expressly in the CTMR. By using that description, the General Court had merely asserted that it was a word mark conveying a laudatory message to the public.
Another of Smart Technologies’ criticisms was that the General Court made an error of law by allegedly reaching the conclusion that it was more difficult to establish distinctiveness in relation to advertising slogans than in relation to other categories of marks. Whilst the CJEU acknowledged that in practice it might be more difficult to establish distinctiveness of slogan marks, the CJEU found that the General Court did not use different criteria to assess the distinctive character of the mark applied for. Rather, the General Court had made clear in its judgment that it was inappropriate to apply stricter criteria to slogans than to other types of sign.
Smart Technologies asserted that a level of distinctiveness lower than is required generally should be sufficient to allow the mark applied for to be registered, as the relevant public was specialised and had a higher level of attention and knowledge than the average consumer. The CJEU acknowledged that the relevant public was made up of German speakers specialising in the computer field whose level of knowledge and attention was greater than that of the general public. However, this did not mean necessarily that a weaker distinctive character was sufficient. The issue of whether the slogan was distinctive involved appraisals of fact and the CJEU emphasised that the General Court had exclusive jurisdiction to assess the facts and evidence. Smart Technologies had not adduced any evidence showing that the General Court had distorted the facts with regard to the distinctiveness of the mark applied for.
The CJEU also rejected Smart Technologies’ argument that the General Court had made findings of fact in the absence of evidence concerning the trade mark value that consumers attribute to marketing claims reiterating that, in the absence of distortion, factual assessments were not subject to review on appeal.