SMARTER SCHEDULING held to lack distinctive character for Class 9 goods

European Union

In nMetric LLC v Office for Harmonisation in the Internal Market (OHIM) (Case T-499/13), the General Court has upheld a decision of the Second Board of Appeal of OHIM finding that the trademark SMARTER SCHEDULING was devoid of distinctive character under Article 7(1)(b) of the Community Trademark Regulation (207/2009).

nMetric LLC, established in Costa Mesa, California, applied for the registration of the word mark SMARTER SCHEDULING in the European Union through the system of international registration. The application concerned goods in Class 9 of the Nice Classification: "Business management systems, namely, suite of computer programs for use in the scheduling, planning, coordination and execution of business, engineering, manufacturing, services, projects and/or supply chain activities which may include, order management, inventory management, resource allocation and management, manufacturing processes and management, services coordination and management, maintenance coordination and management, project and portfolio coordination and management, logistics, data analysis and management."

The OHIM examiner and the Second Board of Appeal refused to register the mark.

The General Court, stating that OHIM did not refuse to register the mark because of its descriptive character, held that there was a measure of overlap between the scope of Article 7(1)(b) and the scope of Article 7(1)(c) of the regulation, Article 7(1)(b) nevertheless being distinguished from Article 7(1)(c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings. The findings made by the Board of Appeal had thus to be examined on that basis.

The court agreed with the board that the relevant public was composed of attentive and observant English-speaking professionals whose degree of attention is higher than average. Further, the court held that the board was correct in finding that the trademark applied for simply informed the relevant public that the software covered by that mark assisted with scheduling, in which planning, coordination and execution may be considered essential steps, in a more intelligent manner than other systems. This was based on the board’s finding that the word ‘smart’ means "appearing to have a degree of intelligence; capable of some independent action" and is frequently used in computer technology to denote how sophisticated and intelligent a program or machine is. The same was true of the comparative ‘smarter’, which refers to a degree of sophistication and intelligence which is yet higher; moreover, the word ‘scheduling’ refers directly to the planning and coordination capacities of the software covered by the trademark applied for. The relevant public would therefore not perceive it as an indication of the commercial origin of the goods at issue, enabling the consumer who acquired the products 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. 

Moreover, the applicant’s website clearly indicated — through the use of expressions such as "schedule more effectively and more realistically" or "schedule faster and more easily", which give direct information on the nature of the goods concerned — that one of the main characteristics of the software covered by the trademark applied for was to make the job of scheduling easier. Although the Board of Appeal could simply have found that the trademark applied for was not distinctive because it described the goods covered by the registration or one of their characteristics, it has nevertheless examined the argument that the trademark applied for could be perceived as a promotional formula with specific characteristics giving it a distinctive character. In the light of existing case-law, it was appropriate to confirm the Board of Appeal’s finding that the term ‘smarter scheduling’ contained no fanciful element which, beyond its obvious promotional meaning, could enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned. Moreover, since the applicant had not succeeded in demonstrating that the trademark applied for had other, special characteristics capable of making that mark distinctive, the Board of Appeal was correct in concluding that the term ‘smarter scheduling’ did not indicate the commercial origin of the goods and was accordingly caught by Article 7(1)(b).  

Paul Steinhauser, Bloemendaal

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