Making special things simple: a good idea -- but not for a trade mark

It's a little while since the IPKat wrote about any trade mark cases involving the registration of slogans.  Indeed, after Vorsprung durch Technik crawled past the finishing post and into the Community trade marks register in Case C-398/08 P Audi AG v Office for Harmonisation in the Internal Market a mere seven years after its application was filed, many of us thought there wasn't much else to discuss on the topic.  Anyway, as has happened on many previous occasions, the Kat has been surprised by subsequent case law, this time in the shape of Case C 311/11 P Smart Technologies ULC v Office for Harmonisation in the Internal Market, a Court of Justice (CJEU) Fifth Chamber decision last Thursday, 12 July.

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.

Smarter ...

Did WIR MACHEN DAS BESONDERE EINFACH have distinctive character? No. The relevant public comprising German speakers who were specialists in the computer field would view the mark, which was a combination of five standard German words, as an advertising slogan containing a laudatory message, containing no unusual variations in regard to German rules of syntax and grammar. The concise nature and the terms of that slogan did not introduce any word play or elements of conceptual intrigue or surprise such as to confer distinctive character in the minds of the relevant public; nor did it possess 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. 

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.

... Smartest

The next topic considered was the degree of distinctiveness required in respect of a specialised public. On this the CJEU said that the relevant public was made up of German speakers who were specialists in the computer field and whose level of knowledge in the area was greater than that of the general public. That fact cannot however have a decisive influence on the legal criteria used to assess the distinctive character of a mark. In any event, the question whether the ill-fated slogan had reached the distinctiveness threshold concerned appraisals of fact, while the General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence and such facts are not the subject of an appeal on a matter of law. Findings of fact in the absence of any evidence

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