JUDGMENT OF THE GENERAL COURT (Second Chamber)

13 April 2011 (*)

(Community trade mark – Application for Community word mark WIR MACHEN DAS BESONDERE EINFACH – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009)

In Case T‑523/09,

Smart Technologies ULC, established in Calgary (Canada), represented by M. Edenborough, QC, T. Elias, Barrister, and R. Harrison, Solicitor,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 29 September 2009 (Case R 554/2009-2), concerning an application for the word sign WIR MACHEN DAS BESONDERE EINFACH as a Community trade mark,

THE GENERAL COURT (Second Chamber),

composed of N.J. Forwood, President, F. Dehousse (Rapporteur) and J. Schwarcz, Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Registry of the General Court on 23 December 2009,

having regard to the response lodged at the Court Registry on 30 March 2010,

further to the hearing on 1 December 2010,

gives the following

Judgment

 Background to the dispute

1        On 17 October 2008, the applicant, Smart Technologies ULC, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        The mark for which registration was sought is the word mark WIR MACHEN DAS BESONDERE EINFACH.

3        The goods in respect of which registration was sought are in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Computerized systems for capturing coordinate inputs, namely graphics, script, drawings and gestures, for interaction with a computer generated display utilizing a pen, stylus, finger or hand; coordinate input capturing devices for use with front projection, rear projection, and direct view displays; absolute and relative position detection devices that utilize mechanically and optically based sensors which enable interaction with a digitizer, touch surface, touch panel, image display, or within a region of interest relative to a display; scalable position detection systems with input generated via passive and/or active input tools; imaging systems for capturing text and graphical images; software for processing text and graphical images, and sharing and/or storing text and graphical images over a computer network; software for sharing collaboration data and images locally or in geographically dispersed locations; software for viewing, editing, and sharing data and images locally or in geographically dispersed locations’.

4        By facsimile of 21 January 2009, the examiner raised objections to registration of the mark applied for based on Article 7(1)(b) of Regulation No 40/94 (now Article 7(1)(b) of Regulation No 207/2009).

5        By letter of 19 March 2009, the applicant responded to the examiner’s objections.

6        By decision of 7 April 2009, the examiner refused the trade mark application, pursuant to Article 7(1)(b) of Regulation No 40/94, in respect of all the goods referred to in the application, on the ground that the mark applied for lacked distinctive character.

7        On 14 May 2009, the applicant lodged an appeal against the examiner’s decision pursuant to Articles 58 to 64 of Regulation No 207/2009.

8        By decision of 29 September 2009 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal.

 Forms of order sought

9        The applicant claims that the Court should:

–        annul the contested decision;

–        in the alternative, amend the contested decision to state that the mark applied for possesses sufficient distinctive character that no objection to its registration may be raised under Article 7(1)(b) of Regulation No 207/2009;

–        order OHIM to pay the costs.

10      OHIM contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

 Arguments of the parties

11      In support of its action, the applicant relies on a single plea in law alleging infringement of Article 7(1)(b) of Regulation No 207/2009, in so far as the Board of Appeal wrongly found that there was no distinctive character within the meaning of that provision.

12      The applicant claims that the mark applied for is not a phrase in ordinary use, nor is it descriptive of its goods; rather it has a distinctive character that enables it to function as an indication of the commercial origin of those goods.

13      In the first place, the mark is not a standard German expression, as demonstrated by an internet search which produced no results for that expression which were not linked to the applicant.

14      The mark applied for is unusually concise, by reason of the use of a phrase ‘das besondere’ as an adjectival noun, where a word that usually functions as an adjective is used as a substantive, and it has an element of word play on account of the absence of a comma and the combination of the words ‘besondere’ and ‘einfach’. The concise nature of the mark applied for, which is moreover grammatically correct, makes it particularly pithy and memorable.

15      Second, the presence of the personal pronoun ‘wir’ (we) in the mark applied for shows that the mark is not simply advertising the goods in question in a general way but refers back to the producer of the goods and thus functions as an indication of commercial origin. The Board of Appeal wrongly considered that the mark applied for relates to the goods in question.

16      Some of the Board of Appeal’s assertions, regarding the relevant public’s perception of the mark applied for and in relation to the use of advertising by many smart technologies companies to laud their products as easy to use, are wholly unsubstantiated by evidence.

17      Third, even if it were found that the mark applied for referred to the goods and not to the undertaking itself, the Board of Appeal was wrong to analyse that mark as a mere advertising slogan. The Board of Appeal was wrong to consider that it was more difficult to establish distinctive character in relation to an advertising slogan than in relation to any other form of word mark. In the applicant’s view, consumers are just as receptive to slogans as indications of commercial origin as they are to other types of word or figurative marks.

18      The applicant points out that a minimum degree of distinctive character is sufficient to render inapplicable the absolute ground for refusal in Article 7(1)(b) of Regulation No 270/2009. In the present case, the relevant public is a specialised public whose awareness and level of attentiveness is higher than that of the average consumer. In the light of those circumstances, it should suffice for the mark applied for to have a level of distinctiveness which is lower than usual in order to have distinctive character.

19      Lastly, the fact that the Board of Appeal adopted a more restrictive approach than in previous cases is an indication that the contested decision is unlawful.

20      OHIM disputes the applicant’s arguments.

 Findings of the Court

21      According to Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered.

22      For a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, paragraph 32; Case C-144/06 P Henkel v OHIM [2007] ECR I-8109, paragraph 34; Case C-304/06 P Eurohypo v OHIM [2008] ECR I-3297, paragraph 66; and Case C-398/08 P Audi v OHIM [2010] ECR I-0000, paragraph 33), in order to enable the consumer who acquired the goods designated to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (Case T‑130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II‑5179, paragraph 18, and Case T‑441/05 IVG Immobilien v OHIM (I) [2007] ECR II‑1937, paragraph 39).

23      The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception which the relevant public has of those goods or services (see Procter & Gamble v OHIM, paragraph 22 above, paragraph 33; Case C‑25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 25; Henkel v OHIM, paragraph 22 above, paragraph 35; Eurohypo v OHIM, paragraph 22 above, paragraph 67; and Audi v OHIM, paragraph 22 above, paragraph 34).

24      The registration of a mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use (Case C‑517/99 Merz & Krell [2001] ECR I‑6959, paragraph 40; Case C‑64/02 P OHIM v Erpo Möbelwerk [2004] ECR I‑10031, paragraph 41; and Audi v OHIM, paragraph 22 above, paragraph 35).

25      As regards the assessment of the distinctive character of such marks, the Court has already held that it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (OHIM v Erpo Möbelwerk, paragraph 24 above, paragraphs 32 and 44, and Audi v OHIM, paragraph 22 above, paragraph 36).

26      However, it is apparent from the case‑law that, while the criteria for the assessment of distinctive character are the same for different categories of marks, it may be that, for the purposes of applying those criteria, the relevant public’s perception is not necessarily the same in relation to each of those categories and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see Proctor & Gamble v OHIM, paragraph 22 above, paragraph 36; OHIM v Erpo Möbelwerk, paragraph 24 above, paragraph 34; Henkel v OHIM, paragraph 22 above, paragraphs 36 and 38; and Audi v OHIM, paragraph 22 above, paragraph 37).

27      The Court has held that the possibility cannot be excluded that that case‑law is also relevant to word marks consisting of advertising slogans (OHIM v Erpo Möbelwerk, paragraph 24 above, paragraph 35, and Audi v OHIM, paragraph 22 above, paragraph 38). The Court has considered that that could be the case in particular if it were established, when assessing the distinctiveness of the trade mark in question, that it served a promotional function consisting, for example, of commending the quality of the product in question and that the importance of that function was not manifestly secondary to its purported function as a trade mark, namely that of guaranteeing the origin of the product. Indeed, in such a case, the authorities may take account of the fact that average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogans (OHIM v Erpo Möbelwerk, paragraph 24 above, paragraph 35).

28      However, difficulties in establishing distinctiveness which may be associated with certain categories of trade marks because of their very nature, such as those consisting of advertising slogans – difficulties which it is legitimate to take into account – do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness as interpreted in the case-law referred to in paragraphs 22 to 23 above (OHIM v Erpo Möbelwerk, paragraph 24 above, paragraph 36 , and Audi v OHIM, paragraph 22 above, paragraph 38).

29      The Court has also observed that, while it is true that a mark possesses distinctive character only in so far as it serves to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, 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. On that point, it should be noted that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services (Audi v OHIM, paragraph 22 above, paragraphs 44 and 45).

30      The Court has therefore considered that it is not sufficient for a finding to the effect that the mark applied for will not be perceived by the relevant public as an indication of the commercial origin of the goods and services in question merely to highlight the fact that that mark consists of and is understood as a promotional formula (Audi v OHIM, paragraph 22 above, paragraph 46).

31      It follows that a mark consisting of an advertising slogan must be regarded as being devoid of distinctive character if it is liable to be perceived by the relevant public as a mere promotional formula. However, according to settled case-law, such a mark must be recognised as having distinctiveness if, apart from its promotional function, it may be perceived immediately as an indication of the commercial origin of the goods or services in question (see, to that effect, REAL PEOPLE, REAL SOLUTIONS, paragraph 22 above, paragraph 20; Case T‑216/02 Fieldturf v OHIM (LOOKS LIKE GRASS… FEELS LIKE GRASS… PLAYS LIKE GRASS) [2004] ECR II‑1023, paragraph 25; Case T‑281/02 Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld) [2004] ECR II‑1915, paragraph 25; and Case T‑320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II‑3411, paragraph 66; see, in respect of functions other than promotional ones, Joined Cases T‑146/02 to T‑153/02 Deutsche SiSi-Werke v OHIM (Stand-up pouch) [2004] ECR II‑447, paragraph 38, and Case T‑139/08 The Smiley Company v OHIM (Representation of half a smiley smile) [2009] ECR II‑3535, paragraph 30).

32      It is in the light of those considerations that it must be considered whether, as the applicant maintains, OHIM infringed Article 7(1)(b) of Regulation No 207/2009 in finding that the mark applied for was devoid of distinctiveness.

33      It should be observed, first of all, that, as held by the Board of Appeal, given the technical nature of the computer goods covered by the trade mark application and the fact that the mark applied for is made up of German terms, the relevant public will be made up of German speakers who are specialists in the computer field, whose level of knowledge in the area is greater than that of the general public.

34      Turning, next, to the mark in respect of which registration is sought, it is made up of a combination of five standard German words forming the phrase ‘wir machen das besondere einfach’, which can be translated by ‘we make special (things) simple’.

35      The mark applied for thus appears to be an advertising slogan which conveys to the relevant public the laudatory message that the computer goods covered by the application make something specialised or complicated simple.

36      As observed by the Board of Appeal, that slogan follows German rules of syntax and grammar and contains no unusual variations in that regard.

37      Moreover, and contrary to the applicant’s submissions, the use of ‘besondere’ together with ‘einfach’ as a noun, or the absence of a comma between the two words, does not introduce any word play or elements of conceptual intrigue or surprise such as to confer distinctive character on the sign mark applied for in the minds of the relevant public. In particular, the specific features of the mark applied for do not in any way appear to give it any particular originality or resonance or trigger in the minds of the relevant public a cognitive process or interpretative effort such as to make that mark, in the perception of that public, anything other than a mere advertising message extolling the qualities of the goods covered by the trade mark application.

38      Nor does the other aspect put forward by the applicant, to the effect that an internet search did not reveal any uses of the mark applied for linked to third parties, affect the finding that that mark is merely an advertising slogan referring to the qualities of the goods.

39      The argument that the mark applied for begins with the element ‘wir’ and therefore refers to the manufacturer rather than to the goods themselves does not in any way lead to the conclusion that it is, for the relevant public, an indication of commercial origin.

40      The fact that the element ‘wir’ – rather obviously – refers to the manufacturer of the goods takes away nothing from the fact that the sign ‘WIR MACHEN DAS BESONDERE EINFACH’ remains a mere advertising slogan liable to be used by any trader, in the computer technology field just as in many other fields, in order to promote the simplicity of goods or services. In other words, the relevant public, in reading the sign, will at the most understand that the goods in question make the performance of a complex task simple and will not tend to perceive in the sign any particular indication of commercial origin, beyond that promotional information.

41      As to the assertion that the Board of Appeal made certain statements without supporting evidence, it should be borne in mind that nothing prohibits OHIM from taking well-known facts into consideration in its assessment (see, to that effect, Case T‑185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraph 29). Moreover, the Board of Appeal’s statements, to the effect that many undertakings applying smart technologies advertise their products as being simple to use, or that consumers are accustomed to short, compact and punchy promotional messages and do not accord trade mark value to such marketing claims, clearly refer to well-known facts.

42      Lastly, as regards the applicant’s arguments based on OHIM’s practice in previous decisions, it should be borne in mind that decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of Board of Appeal decisions must be assessed solely on the basis of that regulation, as interpreted by the European Union judicature, and not on the basis of a previous decision-making practice of those boards (Case C‑37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 47, and Case C‑173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I‑551, paragraph 48).

43      In the light of the foregoing considerations, from which it is apparent that the sole plea put forward by the applicant is unfounded, the present action must be dismissed without its being necessary to rule on the applicant’s second head of claim seeking amendment of the contested decision.

 Costs

44      Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Smart Technologies ULC to pay the costs.

Forwood

Dehousse

Schwarcz

Delivered in open court in Luxembourg on 13 April 2011.

[Signatures]