CFI wipes half a smile off applicant's face

European Union
In The Smiley Company SPRL v Office for Harmonization in the Internal Market (OHIM) (Case T-139/08, September 29 2009), the Court of First Instance (CFI) has held that a figurative trademark representing a half-smile was devoid of distinctive character.
In 2006 Franklin Loufrani obtained an international registration designating the European Union for a figurative mark representing a half-smile. The application covered various goods including:
  • sun dials, ashtrays, urns of precious metal and sacred vessels of precious metal in Class 14 of the Nice Classification);
  •  whips, animal collars and sling bags in Class 18; and
  • diaper pants, ear muffs and underwear in Class 25.
In 2007 OHIM refused to extend protection of the mark to the European Union. In 2008 the Fourth Board of Appeal of OHIM dismissed Loufrani's appeal. The board held that:
  • the goods in respect of which protection was claimed were common consumer goods;
  • the relevant public was the general public of the European Union; and  
  • considering that the goods involved included "items of jewellery, leather ware, clothing and the like", the relevant public would pay a relatively high degree of attention when choosing those goods.
However, the mark at issue was a very simple and ordinary design with an exclusively decorative function, which would not be perceived by the relevant public as a distinctive sign. Loufrani's successor in title, The Smiley Company SPRL, appealed to the CFI.
First, the CFI rejected The Smiley Company's arguments that its mark was distinctive and that a half-smile could function as a trademark. In particular, the CFI described the mark as being:
"composed of a curved, ascending line, comparable to a quarter of a circle, under the middle of which there is a small vertical stroke, and ends, on the right-hand side, with a second short line, almost perpendicular to the first. A vaguely triangular shape marks the intersection of the two main lines. The various elements form a whole."
The CFI also held that no aspect of the mark could be easily and instantly memorized by even relatively attentive consumers. Therefore, the mark would not be perceived immediately as an indication of the commercial origin of the goods in question, but would be viewed exclusively as a decorative element. Thus, the mark did not distinguish the goods at issue from competing goods. The CFI added that:
"[this] finding cannot be called into question by the fact that the relevant public is used to perceiving figurative signs that are simply stripes as trademarks, or that numerous manufacturers have registered such marks to designate goods in Class 25."
However, the real nature of the appeal was revealed later in the decision. The CFI held that:
"[...] the argument that the mark at issue is identified by the relevant public as a ‘half smiley mouth’, the smiley itself having been registered as Community trademark [...], and that it is therefore distinctive, cannot be upheld [...]. As OHIM states, to follow that approach would be tantamount to accepting that every extract from a registered mark and, therefore, every extract from a distinctive mark, is by reason of that fact alone also distinctive for the purposes of Article 7(1)(b) of the Community Trademark Regulation (40/94)."
The CFI pointed out that the assessment of the distinctive character of a mark must be based on that mark’s ability to distinguish the goods or services at issue from those of others. Therefore, the fact that a mark consists of part of a mark which has already been registered is irrelevant in that regard.
The CFI further held that even though the mark at issue may be found to resemble the registered 'smiley' Community trademark (CTM), the "average consumer must place his trust in the imperfect picture of the mark that he has kept in his mind". Furthermore, the relevant public’s recognition of the CTM in the mark applied for presupposed that the relevant public knew the CTM. However, The Smiley Company had not demonstrated that fact. The CFI also pointed out that the small vertical stroke in the mark applied for did not appear in the CTM.
The appeal was thus dismissed.
Arguably, this case represents an attempt by The Smiley Company to prevent others from using designs similar to the smiley emoticons. However, even an application that is doomed to failure will send out a 'keep off the grass' warning to competitors.
Jeremy Phillips, IP consultant to Olswang, London

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