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Sometimes even a smile won’t save you…


A recent decision of the General Court demonstrates that the presence of a commonly-used emoticon in an otherwise non-distinctive mark may not be enough to make the mark distinctive, even if the emoticon stands out for being in colour in an otherwise black and white mark.

In May 2012, smart things solutions GmbH (“smart things”) applied for the figurative mark smart:)things (below)

In March 2013 the mark was granted registration under EUTM No 010914836 in Classes 9, 20 and 35. The protected goods included “Smart phones, Mobile computing devices, tablets” and “Furniture”, while the services included the retailing, wholesaling and mail order of these and other goods.

On 29 February 2016, Samsung Electronics GmbH (“Samsung”) applied for a declaration that the registration was invalid on the basis that the mark was non-distinctive and descriptive in relation to all of the protected goods and services.  However, the Cancellation Division rejected Samsung’s application and the registration was maintained. The Cancellation Division found that the term “SMART THINGS” was descriptive, and noted that the figurative element “🙂” (“the emoticon”) is ubiquitously used as a smiley in society at large, including in business, and has positive connotations. However, the Cancellation Division held that the emoticon endowed the mark with at least a minimum of distinctive character and meant that the mark as a whole was not purely descriptive.

Samsung successfully appealed against this decision. The Fourth Board of Appeal of EUIPO stated that there were two absolute grounds on which the mark should have been refused registration. The first was descriptiveness (based on Article 7(1)(c) of Regulation 2017/1001). The Board found that the words “smart things” in the mark were descriptive of the protected goods and services, in that they could refer to the “intelligent technology” or technological sophistication of the goods and services or were a characteristic of the goods, namely that they were “fashionable” or “chic”.  The Board  recognised that the emoticon in the mark was a “positive smiley” and found it to be common knowledge that use of this emoticon was ubiquitous, that it was not a recent phenomenon and that this emoticon reinforced the message that the goods had positive features.

The Board stated that the second absolute ground on which the mark should have been refused was lack of distinctiveness (based on Article 7(1)(b) of Regulation 2017/1001). The Board found the mark to be non-distinctive not only because of its descriptiveness, but also because of the laudatory connotation of the word ‘smart’ together with the laudatory and positive connotation of the emoticon.

The Board noted that the Cancellation Division had correctly analysed the individual elements of the mark, but had not gone on to reach the correct conclusion about the mark as a whole, stating:

“The contested decision found that the term ‘SMART’ is descriptive, that the term ‘THINGS’ is descriptive, that their combination is descriptive as well, and that the emoticon is ubiquitous and conveys positive feelings. It is difficult to understand why the contested decision did not put one and one together and did not take the appropriate conclusion for the mark as a whole.”

The Board found that there was nothing in the sign as a whole that enabled the relevant public to identify it as a distinctive trade mark for the goods and services claimed. Accordingly, the Board annulled the decision of the Cancellation Division and declared the contested registration to be invalid for all of the goods and services for which it had been registered.

An appeal before the General Court was then lodged by smart things, who called on the Court to annul the decision of the Board of Appeal and order the EUIPO to pay the costs. The appeal was based on 4 points of law:

  1. That the mark is not descriptive in relation to the goods and services. In this connection, smart things submitted that the word “smart” and the emoticon are primarily associated with human beings or other living beings and cannot be directly connected with the relevant goods and services. It further argued that the relevant public thinks of the emoticon as representing a human smile and does not see it as having a laudatory significance relating to the value and quality of the goods and services concerned. smart things further argued that the mark should not be considered purely descriptive because it does not merely consist of descriptive elements, given that the Board of Appeal had not found the “smiley” emoticon to be a descriptive element of the mark.
  2. That the mark has distinctive character for the goods and services. In this context, smart things argued that their mark fulfils the requirements of a minimum degree of distinctiveness. It claimed that since the mark was not descriptive, it could serve the essential function of a trade mark as an indication of the origin of the goods and services for which it had been registered.
  3. That the decision of the Board of Appeal went against the principles of equal treatment and sound administration. In this context, smart things submitted that the Board of Appeal had not taken into account the numerous EUTM registrations which it had cited of marks which it claimed were similar or almost identical to the contested mark. It argued that the Board of Appeal had not explained why the contested mark was declared invalid while these registrations remained on record.
  4. That the Board of Appeal had infringed the principle that the burden of proof rests upon the applicant for a declaration of invalidity. In this context, smart things stated that instead of only considering evidence submitted by Samsung, the Board of Appeal had also relied on allegedly well-known facts in order to conclude that at the time when the application was filed (in 2012), the relevant public perceived the contested mark in a certain way. It questioned how the Board of Appeal could conclude that the facts concerned were so obvious that they could be classified as well known, given that Samsung had not provided any evidence of the relevant public’s perception of the terms included in the contested mark at that time.

In dismissing the first plea, re descriptiveness, the General Court pointed out that it is only possible to assess whether a sign is descriptive by reference first to the goods or services concerned and second to the perception of the relevant public, which consists of the consumers of those goods or services.  The General Court generally agreed with the Board of Appeal that the individual words ‘smart’ and ‘things’ and the combination of those words were all descriptive in terms of all of the designated goods and services. The Court also found that the Board of Appeal had correctly identified the relevant public in this case to consist of average consumers both within the general public and within a specialist public in the field of information technology and in that of business, in all of the regions of the European Union in which basic English words are understood.

The General Court accepted that the Board of Appeal did not consider the emoticon to be a descriptive element of the contested mark and therefore conceded that the contested mark does not consist solely of descriptive elements. However, the General Court stated that case-law holds that if a mark consists of descriptive words and a figurative element,  the mark as a whole will be considered descriptive unless the figurative elements of the mark will divert the attention of the relevant public from the descriptive message conveyed by the words. The Court held that the non-descriptive “smiley” emoticon in the contested mark is devoid of any distinctive character and cannot therefore divert the relevant public’s attention from the descriptive message conveyed by the word elements ‘smart’ and ‘things’.  The fact that the “smiley” emoticon is in green in the contested mark only makes it more visible in the mark and does not confer any particular distinctive character on it.

The General Court upheld the decision that the mark as a whole was descriptive for the goods and services.

In dismissing the second plea, re distinctiveness, the General Court stated that since it had already held that the Board of Appeal was right in finding the contested mark to be descriptive of the goods and services, it was therefore also right to find that on account of that descriptiveness the contested mark could not enable the consumer to identify the origin of the goods and services. However, the General Court noted that the Board of Appeal had also analysed whether the contested mark was distinctive irrespective of its descriptiveness. The Board of Appeal had concluded that there was nothing in the mark, beyond its obvious laudatory meaning promoting the goods and services, that would enable the relevant public to recognise the combined elements as forming a distinctive trade mark for the goods and services covered by the contested mark.  smart things  had not submitted any arguments seeking to call that analysis into question.

The General Court therefore upheld the decision that the contested mark was devoid of any distinctive character.

The General Court also held that the Board of Appeal had not in any way infringed the principles of equal treatment and of sound administration, and had also not infringed the relevant legislation regarding the burden of proof. The Court found that the adjudicating bodies of EUIPO are entitled to base their decisions on facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources, in addition to the facts and evidence submitted by the parties. Accordingly, the third and fourth pleas were also rejected.

The General Court dismissed the appeal by smart things and ordered them to pay costs.

This decision illustrates that it is difficult to create a distinctive mark simply by combining several elements which are each descriptive and/or non-distinctive in themselves. However, there can be cases where the whole may be greater than the sum of its parts, if the combination of elements is so striking and unusual that the mark as a whole creates a distinctive overall impression. If you are unsure whether or not you have a distinctive trade mark, a Trade Mark Attorney will be happy to advise you.

Please find the link to the case here.

smart things solutions GmbH v European Union Intellectual Property Office (EUIPO)

Case T‑48/19

Decision date: 15 October 2020

Judgment of the General Court (Second Chamber)

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

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