Facts

In February 2016, Samsung Electronics GmbH challenged the validity of the following figurative EU trade mark registration in Classes 9 (including “smartphones, mobile computing devices, tablets”), 20 (including “furniture, mirrors, picture frames”) and 35 (including “advertising and business management”), owned by smart things solutions GmbH:

Samsung claimed that the mark was invalid on the basis of Articles 7(1)(b) and (c) of the Trade Mark Regulation (207/2009/EC) (now 2017/1001/EU) in relation to all the goods and services.

The Cancellation Division of EUIPO rejected Samsung’s application, but the decision was overturned by the Fourth Board of Appeal, which found that the words SMART THINGS were descriptive, that the smiley emoji figurative element in smart thing’s mark was devoid of any distinctive character and did not divert attention away from the descriptive meaning of the word elements, and that the mark as a whole lacked distinctive character. Samsung appealed to the General Court.

Decision

Article 7(1)(c) – descriptiveness

The GC rejected smart things’ argument that the word SMART was, at the time the application was filed, attributed to humans only and not to the goods and services concerned. The evidence contradicted this, it said, as shown by documents contemporary to the filing date.

The GC agreed with the BoA that the word SMART referred to intelligent technology which, in addition to artificial intelligence, also related to “any technological feature over and above the “traditional” features of products”. The goods in Class 9 were electronic or technologically sophisticated goods that could have intelligent functions, it said. In fact, “smartphones” expressly referred to the concept of “smart”. Further, the goods in Class 20 could be part of technologically sophisticated objects, e.g. furniture or mirrors, which electronically adapt themselves to certain conditions, which can be controlled remotely or which auto-control via a smart software application. As for Class 35, the GC said that the services referred either to “smart” goods or to the “smart” way in which they were provided.

As for the word THINGS, the GC agreed with the BoA that it meant any object or concept, whether tangible or intangible, and that it was not therefore limited to physical objects. Further, it agreed that the combination of SMART and THINGS complied with the rules of English grammar, and was not sufficiently unusual to create a new and clearly different meaning, such as to create a distinctive mark.

As for the smiley emoji figurative element, the GC agreed with the BoA that it represented a smile, that its use was ubiquitous, and that it did not express an abstract emotion, but underlined the meaning of the word SMART and reinforced the message that the goods had positive features. It was wrong to say that the relevant public could not make a direct connection between the emotion expressed by the emoji and non-living matter.

The BoA had not found the emoji per se to be descriptive. Therefore, it was true that the mark did not consist solely of descriptive elements. However, the GC said, according to case law, if the word element of a mark is descriptive, the mark is, as a whole, considered to be descriptive if the figurative elements do not divert the relevant public’s attention from the descriptive message conveyed by the word elements. As the emoji was devoid of any distinctive character it could not divert the relevant public’s attention from the descriptive message conveyed by the words SMART and THINGS.

Article 7(1)(b) – distinctive character

The GC said that it was not necessary to consider whether the mark was devoid of distinctive character as it had already found that it was descriptive, and Article 7(1) was clear that only one absolute ground for refusal is necessary to render a mark non-registrable.

Nevertheless, the GC recognised that there is some overlap between descriptiveness and distinctive character and held that the BoA had been correct to find that, given its findings on descriptiveness, the mark did not enable the consumer to determine the origin of the goods and that it was therefore devoid of distinctive character. In any event, the BoA had considered the question of whether the mark had distinctive character irrespective of its descriptiveness and had concluded that there was nothing in the mark, beyond its laudatory meaning promoting the goods and services, that enabled the consumer to memorise the sign easily and instantly as a distinctive mark for the goods and services concerned.

The appeal was dismissed. (Case T-48/19 smart things solutions GmbH v EUIPO (SMART THINGS) EU:T:2020:483 (15 October 2020) — to read the judgment in full, click here).