So what happened here? In October 2008 Smart applied to register as a Community trade mark (CTM) the slogan ‘WIR MACHEN DAS BESONDERE EINFACH’ (the German for “We make special (things) simple”). The goods for which registration was sought were a whole bundle of computish things, all in Class 9. In April 2009 the examiner refused the trade mark application, under Article 7(1)(b) of the CTM Regulation, saying that this marked lacked distinctive character. The First Board of Appeal dismissed Smart's appeal, as did the General Court.
It's worth taking a look, at this point, at what the General Court did.
First it summarised the relevant Court of Justice case-law for establishing whether a mark has distinctive character, paying special attention to Case C 398/08 P Audi. From this the Court established that, even though it was inappropriate to apply to slogans any legal criteria that were stricter than those applicable to other types of sign, those selfsame criteria might make it tougher for slogans to get registered than other types of mark,
The Court next observed that the mere fact that a mark was perceived by the relevant public as a promotional formula did not automatically mean that that mark was devoid of distinctive character: such a mark could be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of the goods or services concerned. However, an advertising slogan would be regarded as being devoid of distinctive character if the relevant public perceived it only as a mere promotional formula -- unless that slogan might still be perceived immediately as an indication of the commercial origin of the goods in question.
After dismissing the cunning argument that, in referring to the manufacturer by using the word ‘wir’ (‘we’), the slogan indicated commercial origin, the Court then dismissed the less cunning argument that, in saying it was the sort of slogan that other undertakings would assert in their advertising for smart technologies that their products were simple to use, the Board of Appeal was making the facts up as it went along rather than basing its fact-finding on any solid evidence.
Smart Technologies then appealed to the CJEU, which did what everyone else did and dismissed the appeal.
Starting with the way the relevant public would perceive the slogan, the CJEU agreed that the General Court was right to confirm that the distinctive character of the slogan for depended only on whether it was perceived, by the relevant public, as an indication of the commercial origin of the goods concerned, while accepting that that mark might be understood by the same public as both a promotional formula and an indication of commercial origin. The General Court clearly it reached its conclusion that the mark was devoid of distinctive character not on the ground that it was a promotional formula but on the ground that it was not perceived by the relevant public as an indication of the commercial origin of the goods and services concerned.
As to treatment of slogans in general the General Court, by describing WIR MACHEN DAS BESONDERE EINFACH for as a slogan, did not create a special subcategory or even a separate one from that of other word marks, but only asserted that this was a word mark which conveyed to the relevant public a laudatory message or extolled the qualities of the goods covered by the trade mark application. Nor did that court use different criteria to assess its distinctive character from those used for other word signs. On the contrary, it considered that it was inappropriate to apply to slogans criteria which were stricter than those applicable to other types of sign and did not base its conclusion on the presumption that the distinctiveness of that sign was more difficult to establish than that of other word signs.
Finally, it could not be argued that the Board of Appeal had substituted its own knowledge for factual evidence. The Board's finding of fact was a matter of fact, not of law, and was not admissible on an appeal to the CJEU.
The IPKat thinks this is correct, but his poor little head is really spinning in trying to work out the best way to apply the criteria for establishing distinctive character in a slogan which may be potentially perceived by the relevant consumer in one or more of three different ways. Can some kind reader come up with a neat little flow-chart that incorporates all the CJEU criteria, he pleads.
Merpel is quite fascinated by the idea that distinctive character can ever be a function of the perception of more, or less, specialised, consumers. She thinks that it probably can, in the real world, and wonders how long it will take for this notion to be absorbed into the law.
Special things here (per Captain Beefheart)
Simple things here
Not-so-simple things here
Cat slogans here