Mark held to be mere advertising slogan

European Union
In Smart Technologies ULC v Office for Harmonisation in the Internal Market (OHIM) (Case T-523/09, April 13 2011), the General Court has considered whether the mark WIR MACHEN DAS BESONDERE EINFACH (translated by the court as ‘We make special (things) simple’) was registrable as a Community trademark.

Canadian company Smart Technologies ULC sought to register the mark for, among other things, computerised systems for capturing coordinate inputs. 

Although it was recognised that the mark was an advertising slogan, this was not, as such, an obstacle to it being a valid trademark. However, the court found that the slogan ‘We make special (things) simple’ was liable to be perceived by the relevant public as a mere promotional formula and, therefore, was devoid of distinctive character. In particular, the court found that, because the mark was made up of German words, the relevant public consisted 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.

Further, the court held that the mark consisted of a combination of five standard German words, and that the slogan followed the German rules of syntax and grammar and contained no unusual variations in that regard. The fact that the slogan started with the word 'Wir' ('We') did not in any way lead to the conclusion that it was an indication of commercial origin for the relevant public, because it remained a slogan liable to be used by any trader. The court concluded as follows:

In other words, the relevant public, in reading the sign, will at 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."

The action was thus dismissed. 

Paul Steinhauser, Arnold+Siedsma, Amsterdam

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