General Court, Judgment of 13 April 2011, T-523/09 ("WIR MACHEN DAS BESONDERE EINFACH")

The General Court confirmed that the slogan "WIR MACHEN DAS BESONDERE EINFACH" was devoid of distinctive character as it was liable to be perceived as a mere promotional message. Following the Court of Justice of the European Union (CJEU)'s decision in "VORSPRUNG DURCH TECHNIK" it was hoped that the courts' strict approach to registration of slogans would be relaxed. Unfortunately, once more, the General Court confirmed its previous approach and refused registration.

Smart Technologies ULC applied to register the word mark "WIR MACHEN DAS BESONDERE EINFACH" ["we make special (things) simple"] as a Community trademark for various computer-related goods in class 9.

The Office for Harmonization in the Internal Market (OHIM) refused the registration under Article 7(1)(b) Community Trademark Regulation, on the ground that the mark lacked distinctive character. OHIM's second Board of Appeal  subsequently confirmed the refusal.

Smart Technologies brought an appeal before the General Court which was, however, also dismissed. While referring to the CJEU's decision in the "VORSPRUNG DURCH TECHNIK" case[1] in which the CJEU took a more liberal approach, the General Court retained its strict line against the registration of slogans as Community trademarks.

The court reconfirmed that it was inappropriate to apply stricter criteria to slogans than to other types of signs when assessing the distinctive character of the marks. However, it took the view that the public's perception was not necessarily the same with regard to slogans, so that it could prove more difficult to establish distinctiveness in relation to such marks. It also confirmed that the "mere fact that a mark is perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character".

In line with the "VORSPRUNG DURCH TECHNIK" decision, the General Court held that a trademark consisting of a slogan could be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods and services. However, in the case at hand, the court considered the sign devoid of any particular indication of commercial origin beyond the promotional information.

The court confirmed the Board of Appeal's view that it was a well-known fact that many undertakings applying smart technologies advertised their products as being simple to use. The court translated the sign as "we make special (things) simple" and concluded that the relevant public would understand that the goods in question made the performance of a complex task simple.

In the "VORSPRUNG DURCH TECHNIK" decision, the CJEU took the view that - whilst plays on words or elements of conceptual intrigue or surprise were not a necessary condition for establishing that an advertising slogan had distinctive character - as a rule, the presence of those characteristics was likely to endow a mark with distinctive character. In the present case, the General Court held that the slogan followed standard German grammar and syntax, and considered that there was no word play or conceptual surprise through the use of "besondere" together with "einfach". The trademark applied for would not, in the court's view, trigger in the minds of the relevant public a cognitive process or interpretative effort. Accordingly, the court held that the consumer would perceive the application as a mere advertising message extolling the qualities of the goods covered.

Lastly, the General Court also rejected the applicant's argument that the element "wir" (meaning "we") contained in the trademark applied for referred to the manufacturer, holding that the sign "WIR MACHEN DAS BESONDERE EINFACH" remained a mere advertising slogan as it could be used by any trader in that field.