JUDGMENT OF THE GENERAL COURT (Second Chamber)
15 October 2020 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark smart:)things – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EU) 2017/1001 – Article 59(1)(a) of Regulation 2017/1001 – Article 95(1) of Regulation 2017/1001)
In Case T‑48/19,
smart things solutions GmbH, established in Seefeld (Germany), represented by R. Dissmann, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Söder, H. O’Neill and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Samsung Electronics GmbH, established in Schwalbach/Taunus (Germany), represented by T. Schmitz, M. Breuer and I. Dimitrov, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 November 2018 (Case R 835/2018-4), relating to invalidity proceedings between Samsung Electronics and smart things solutions,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, P. Škvařilová-Pelzl and I. Nõmm (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 28 January 2019,
having regard to the response of EUIPO lodged at the Court Registry on 8 May 2019,
having regard to the response of the intervener lodged at the Court Registry on 8 May 2019,
further to the hearing on 11 June 2020,
gives the following
Judgment
Background to the dispute
1        On 6 March 2013, the applicant, smart things solutions GmbH, obtained from the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), the registration of the figurative mark reproduced below:
2        The goods and services in respect of which the contested mark was registered were in Classes 9, 20 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:
–        Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (see provision), life saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; cash registers, calculating machines and data processing equipment and computers; fire-extinguishing apparatus; telephone holders and mobile telephone holders, smart phones, mobile computing devices, tablets; charging stations for mobile telephones, smartphones, mobile computers, tablet computers; docking stations for mobile telephones, smartphones, other articles, in particular in the fields of photography, video, audio, computers and telecommunications’;
–        Class 20: ‘Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whale bone, shell, amber, mother of pearl, meerschaum and substitutes for all of these materials, or of plastics’;
–        Class 35: ‘Advertising; business management; business administration; office functions; presentation of goods on communications media for retail purposes; compiling of various goods (except the transport thereof) for others, to facilitate the display and purchase of the aforesaid goods for customers; retailing, wholesaling and mail order of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, cash registers, calculating machines, data processing equipment and computers, fire extinguishing apparatus, holders for mobile telephones, smartphones, mobile computers, tablet computers, charging stations for mobile telephones, smartphones, mobile computers, tablet computers, docking stations for mobile telephones, smartphones, other articles, in particular in the fields of photography, video, audio, computers and telecommunications, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; sale via electronic media, of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, cash registers, calculating machines, data processing equipment and computers, fire extinguishing apparatus, holders for mobile telephones, smartphones, mobile computers, tablet computers, charging stations for mobile telephones, smartphones, mobile computers, tablet computers, docking stations for mobile telephones, smartphones, other articles, in particular in the fields of photography, video, audio, computers and telecommunications, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; sale of consumer goods, accessories and other articles in the fields of photography, video, audio, computers and telecommunications’.
3        On 29 February 2016, the intervener, Samsung Electronics GmbH, filed with EUIPO an application for a declaration that the contested mark was invalid, on the basis of Article 52(1)(a) and Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 59(1)(a) and Article 7(1)(b) and (c) of Regulation 2017/1001), in respect of all the goods and services.
4        On 8 March 2018, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
5        On 7 May 2018, the intervener filed a notice of appeal, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
6        By decision of 20 November 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the Cancellation Division’s decision and declared the contested mark invalid for all of the goods and services in respect of which it had been registered. The contested decision was based on two absolute grounds for refusal. After stating that the relevant public consisted of average consumers both within the general public and within a specialist public, in all the regions of the European Union in which basic English words were understood, the Board of Appeal stated that the first absolute ground for refusal was based on Article 7(1)(c) of Regulation 2017/1001. It pointed out that the word elements ‘smart things’ were descriptive of the goods and services covered by that mark on the ground that they referred to the intelligent technology or technological sophistication of those goods and services or that they were a characteristic of the goods at issue, namely that they were ‘fashionable, chic’. As regards the figurative element ‘:)’, it pointed out that that it was a ‘positive smiley’, that it was common knowledge that its use was ubiquitous, that it was not a recent phenomenon and that it reinforced the message that the goods had positive and advanced features. The second absolute ground for refusal was based on Article 7(1)(b) of Regulation 2017/1001. First, the Board of Appeal pointed out that the contested mark lacked distinctive character because of its descriptiveness. Secondly, it stated that the laudatory connotation of the word element ‘smart’ in conjunction with the laudatory and exclusively positive connotation of the emoticon rendered the sign devoid of distinctive character. It therefore found that there was nothing in the sign as a whole that, beyond its obvious laudatory meaning promoting the goods and services in question, enabled the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services claimed.
Procedure and forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
8        EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
9        In support of the action, the applicant relies on four pleas in law, alleging, in essence: (i) infringement of Article 7(1)(c) of Regulation 2017/1001; (ii) infringement of Article 7(1)(b) of that regulation; (iii) infringement of the principles of equal treatment and of sound administration; and (iv) infringement of the last sentence of Article 95(1) of that regulation.
The first plea, alleging, in essence, infringement of Article 7(1)(c) of Regulation 2017/1001
10      In the context of the first plea, the applicant disputes that the contested mark is descriptive. It submits that the word element ‘smart’ and the figurative element ‘:)’ cannot be directly connected with the goods and services covered by that mark, since those two elements are primarily associated with human beings or living beings. Regarding the word element ‘smart’, it submits that the general public could not, at least at the time when the application for registration of that mark was filed, make a direct connection between the quality of ‘intelligence’ and non-living matter. According to the applicant, the same is true of the emoticon which stands for positive emotions, which can be exclusively associated only with human beings. Moreover, it states that the emotion conveyed by the emoticon cannot be construed as laudatory because the relevant public thinks of a human smile and does not see it as a positive statement concerning the value and quality of the goods and services concerned. It submits that that element is not therefore in any way descriptive and is even less so in combination with the other elements of the mark at issue. The applicant concludes, first, that the mark at issue does not, contrary to what the case-law requires, merely consist of descriptive elements. It states, secondly, that, in any event, the easily recognisable connection between the sign and the goods and services as required by the case-law does not exist in the present case, because the relevant consumer has to go through a thought process.
11      EUIPO and the intervener dispute that plea.
12      It must be borne in mind that Article 7(1)(c) of Regulation 2017/1001 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service must not be registered. Under Article 7(2) of Regulation 2017/1001, it is sufficient that that absolute ground for refusal obtains in part of the European Union.
13      Article 7(1)(c) of Regulation 2017/1001 pursues an aim in the public interest, which requires that signs or indications which may serve, in trade, to designate characteristics of the goods or services for which registration is sought may be freely used by all. That provision therefore prevents those signs or indications from being reserved to one undertaking alone because they have been registered as trade marks and prevents an undertaking from monopolising the use of a descriptive term to the detriment of other undertakings, including its competitors, whose range of available vocabulary for describing their own goods would thereby be limited (see judgment of 25 November 2015, Ewald Dörken v OHIM – Schürmann (VENT ROLL), T‑223/14, not published, EU:T:2015:879, paragraph 20 and the case-law cited).
14      It is also important to point out that whether a sign is descriptive can be assessed only, first, by reference to the goods or services concerned and, secondly, by reference to the perception of the target public, which consists of the consumers of those goods or services (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 22 May 2008, Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), T‑254/06, not published, EU:T:2008:165, paragraph 33; see also, judgment of 17 May 2011, Consejo Regulador de la Denominación de Origen Txakoli de Álava and Others v OHIM (TXAKOLI), T‑341/09, EU:T:2011:220, paragraph 20 and the case-law cited).
15      Consequently, for a sign to come within the scope of Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods or services which it designates to enable the public concerned immediately to perceive, without further thought, a description of those goods or services or one of their characteristics (see judgment of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
16      It must also be borne in mind that a mark consisting of a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of those characteristics, unless there is a perceptible difference between the word and the mere sum of its parts; that presupposes that, because of the unusual nature of the combination in relation to the goods or services, the word creates an impression which is sufficiently far removed from that produced by the mere combination of the meanings of its constituent elements, with the result that it is more than the sum of its parts (judgments of 25 February 2010, Lancôme v OHIM, C‑408/08 P, EU:C:2010:92, paragraph 62; of 30 January 2015, Siemag Tecberg Group v OHIM (Winder Controls), T‑593/13, not published, EU:T:2015:58, paragraph 29; and of 12 March 2019, Novartis v EUIPO (SMARTSURFACE), T‑463/18, not published, EU:T:2019:152, paragraph 22).
17      It is in the light of those principles, which are common to the absolute ground for refusal of registration, as laid down in Article 7(1)(c) of Regulation 2017/1001, and to the absolute ground for invalidity, as laid down in Article 59(1)(a) of that regulation, which refers to Article 7 of that regulation, that it is necessary to examine the applicant’s arguments that, contrary to what was found in the contested decision, the contested mark is not descriptive (see, to that effect, judgment of 29 May 2018, Sata v EUIPO – Zhejiang Rongpeng Air Tools (2000), T‑301/17, not published, EU:T:2018:311, paragraph 35).
The relevant public
18      The Board of Appeal points out, in paragraph 14 of the contested decision, that the goods and services covered by the contested mark are aimed at the general public and at a specialist public in the field of information technology and in that of business. It states that, since the expression consists of terms belonging to the basic English vocabulary commonly used in the fields of information technology and television or international business transactions, the ground for invalidity is thus not limited to the Member States in which English is the official language, but extends to all the regions of the European Union in which basic English words are understood.  Those findings, which are not, moreover, disputed by the applicant, are correct.
The word elements ‘smart’ and ‘things’
19      The applicant submits that the word elements in the contested mark are not descriptive of the goods and services which that mark covers and that, taken as a whole, that mark can likewise not be descriptive. In the first place, it argues that the word element ‘smart’ was attributed, at least at the time when the application for registration of that mark was filed, to humans and not to the goods and services concerned. In the second place, as regards the word element ‘things’, it states, in the summary of the facts of the application, that it had submitted in its observations before the Board of Appeal that, unlike the terms ‘smart phone’, ‘smart tv’ and ‘smart home’, that word element was a much broader, more indefinite term with no particular meaning and that the terms ‘smart things’ could not, in any event, apply to the services in Class 35 covered by the contested mark since the term ‘things’ referred to tangible objects.
20      In the first place, it must be stated that the applicant’s arguments regarding the word element ‘smart’ cannot succeed.
21      First, the Board of Appeal was right in stating, in paragraph 21 of the contested decision, that the word element ‘smart’ referred to intelligent technology which, in addition to artificial intelligence, also relates to ‘any technological feature over and above the “traditional” features of products’. In that sense, it must be accepted that that word element is descriptive of the goods and services covered by the contested mark. As regards, first of all, the goods in Class 9, it must be pointed out that those goods are electronic or technologically sophisticated goods which can have intelligent functions, as is apparent from paragraph 37 of that decision. It must be noted in that regard that one of those goods expressly refers to the concept of ‘smart’, namely ‘smartphones’.
22      Next, it must be pointed out that the word element ‘smart’ may also have a descriptive meaning as regards the goods in Class 20 covered by the contested mark, which can, as is stated in paragraph 38 of the contested decision, be part of technologically sophisticated objects. The Board of Appeal correctly illustrates its finding by referring to furniture or mirrors which electronically adapt themselves to certain conditions, which can be remote controlled or which auto control themselves via smart software applications.
23      Lastly, the reasoning in paragraphs 41 to 43 of the contested decision regarding the services in Class 35 covered by the contested mark must be endorsed. As regards the retail or wholesale services in respect of the goods in Classes 9 and 20, it must be held that that mark merely indicates that goods which have the characteristic of being ‘smart’ are available at the point of retail sale. As regards the other services, namely those of advertising and business management, those services refer either to smart goods or to the ‘smart’ way in which those services are provided.
24      In that context, it must be pointed out that the applicant has not in any way substantiated its claim that, at the time when the application for registration of the contested mark was filed, the relevant public attributed the quality of ‘smart’ only to human beings or living beings and not to goods. As is referred to in the Cancellation Division’s decision and as is stated by EUIPO, a number of documents that were submitted by the intervener and are contained in the case file relating to the proceedings before EUIPO show, on the contrary, that, at that time, the term ‘smart’ was already being used with regard to goods which had technological features. The Cancellation Division’s reference to EUIPO’s decision of 23 May 2003 (002688695) – refusing registration of the sign SmartCam – and to the decision of the First Board of Appeal of EUIPO of 24 February 2005 (R 798/2004-1) – confirming, in addition, the purely descriptive nature of the sign SmartNet – reinforces the finding that it is incorrect to take the view that the relevant public attributed the quality of ‘smart’ only to human beings.
25      Secondly, the Board of Appeal was right in stating that the word element ‘smart’ could also be understood in the sense of ‘fashionable, chic’, which the applicant does not, moreover, dispute. In that regard and as the Board of Appeal stated in paragraph 39 of the contested decision, that meaning of that word element is relevant as regards the goods in Class 20 which do not have any technological function or feature. It is therefore apparent from the Board of Appeal’s assessments that the fact that the goods in that class which do not have any technological features, such as, for example, objects of cork, ivory, amber or meerschaum, can be ‘chic, stylish objects’ may be regarded as a relevant common characteristic for the purposes of descriptiveness, which makes it possible to place those goods in a sufficiently homogenous single group (see, to that effect, judgments of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraphs 35 and 36, and of 13 May 2020, Koenig & Bauer v EUIPO (we’re on it), T‑156/19, not published, EU:T:2020:200, paragraph 68).
26      It follows that the Board of Appeal did not make any error of assessment in finding that the word element ‘smart’ was descriptive of all of the goods and services covered by the contested mark.
27      In the second place, as regards the word element ‘things’, the Board of Appeal stated in paragraph 24 of the contested decision that that word element meant any object or concept, whether tangible or intangible, and that it was not therefore limited to physical objects. It found, in paragraph 40 of that decision, that all the good in Classes 9 and 20 covered by the contested mark were physical objects. It also found, in paragraph 43 of the contested decision, that that word element referred to the services concerned in Class 35 either as a reference to the goods to which the services pertained (such as an advertisement devised for those goods) or as a reference to the smart way in which the services were provided.
28      Those findings on the part of the Board of Appeal, which the applicant has not, moreover, called into question in the part of the application devoted to the ‘Pleas in Law’, are correct.
29      It must be added that the Board of Appeal was right in finding, in paragraph 26 of the contested decision, that the combination of the terms ‘smart’ and ‘things’ complied with the rules of English grammar. Furthermore, the association of those terms did not represent anything more than a description or characterisation of the things by means of the adjective ‘smart’ or ‘stylish’. It must therefore be held that such a combination was not sufficiently unusual to create a new and clearly different meaning. Consequently, as has been referred to in paragraph 16 above, it cannot be held that that combination of descriptive elements within the contested mark served to create a distinctive mark.
The figurative elements of the contested mark
30      In order to dispute that the contested mark is descriptive, the applicant submits that the figurative element which the emoticon constitutes cannot itself be regarded as descriptive. In that regard, it argues, first, that that figurative element represents a positive emotion, which is exclusively associated with humans and could not therefore be attributed, at least at the time when the application for registration of the contested mark was filed, to the goods and services concerned. It submits that there is thus no immediate connection between that figurative element and those goods and services and that that figurative element cannot therefore be regarded as a characteristic for the purposes of Article 7(1)(c) of Regulation 2017/1001. Secondly, it submits that the emoticon cannot be construed as laudatory, since there is no connection between the human smile which that figurative element represents and the goods and services covered by that mark.
31      A preliminary point to note is that the Board of Appeal found, in paragraph 32 of the contested decision that the font used for the letter ‘T’ in both word elements differed slightly from the most common fonts, but that that element remained devoid of any distinctive character. That finding, which is not, moreover, disputed by the applicant, is correct since the average consumer will not engage in an analysis of the various details of the mark and will not therefore analyse the typographical details of the contested mark.
32      As regards the figurative element ‘:)’, it must be pointed out at the outset that, contrary to what the applicant seems to understand, the Board of Appeal did not find that the emoticon was descriptive, but found rather that it was devoid of any distinctive character and that, in essence, it did not divert attention away from the descriptive meaning of the word elements.
33      First, as regards the applicant’s claim that the emoticon represented a positive emotion which was exclusively associated with humans, it must be pointed out that that claim is not well founded. As the Board of Appeal states in paragraphs 28 to 31 of the contested decision, it is common knowledge that the emoticon consisting of the characters ‘:’ and ‘)’ represents a smile and that its use is ubiquitous in emails and other types of electronic message and also in advertising. The Board of Appeal was also right in finding that that figurative element did not merely express an abstract emotion, but underlined the meaning of the word element ‘smart’ and thus reinforced the message that the goods concerned had positive features.
34      In so far as the applicant must be considered to be submitting that the relevant public could not, at the time when the application for registration of the contested mark was filed, make a direct connection between the emotion expressed by the emoticon and non-living matter, it must be pointed out that such an argument cannot succeed. The Board of Appeal was right in finding that it could rely on the well-known nature of the meaning of the figurative element as a smiley and of its widespread use in electronic messages and advertising and also on the fact that those smileys are not a recent phenomenon.
35      Secondly, as regards the applicant’s argument that the emoticon is not in any way laudatory in nature, the basis for that argument is that the emoticon represents a positive emotion which is exclusively associated with humans and not with objects. However, for the reasons which have already been set out in paragraph 34 above, that argument cannot succeed. The Board of Appeal did not therefore err in finding, in paragraph 31 of the contested decision, that, in essence, the emoticon emphasised the idea that what is ‘smart’ is positive and thus reinforces the message that the goods concerned have positive features, in the present case those of having intelligent technology.
36      Thirdly, it is to no avail that the applicant puts forward an argument based on the view that the contested mark cannot be considered to be descriptive on the ground that, contrary to what is required by the case-law, it does not merely consist of descriptive elements.
37      It is true that, as has been stated in paragraph 32 above, the Board of Appeal did not consider the emoticon to be a descriptive element of the contested mark. It must therefore be admitted that the contested mark does not consist solely of descriptive elements. However, according to the case-law, if the word element of a mark is descriptive, the mark is, as a whole, descriptive if the figurative elements of that mark do not divert the relevant public’s attention from the descriptive message conveyed by the word elements (judgments of 6 April 2017, Metabolic Balance Holding v EUIPO (Metabolic Balance), T‑594/15, not published, EU:T:2017:261, paragraph 33, and of 15 March 2018, SSP Europe v EUIPO (SECURE DATA SPACE), T‑205/17, not published, EU:T:2018:150, paragraph 31). It is apparent from paragraphs 32 to 34 above that the non-descriptive emoticon in the contested mark is devoid of any distinctive character and cannot therefore as a result divert the relevant public’s attention from the descriptive message conveyed by the word elements ‘smart’ and ‘things’.
38      Fourthly and in addition, the Board of Appeal was right in stating, a statement which has not been disputed by the applicant, that the green colour of the emoticon only made it visible in the sign separately from the words situated before and after, and prevented any interpretation of the sign as ‘smart:’, and that that colour did not confer any particular distinctive character on it (paragraph 32 of the contested decision).
39      The Board of Appeal therefore correctly applied Article 7(1)(c) of Regulation 2017/1001 in finding that, taken as a whole, the contested mark was descriptive.
40      Consequently, in accordance with what has been stated in paragraph 15 above, it must be held that there was a sufficiently direct and specific relationship between the contested mark and the goods and services which it designated to enable the public immediately to perceive, without further thought, a description of those goods and services or one of their characteristics.
41      In that regard, the Board of Appeal’s conclusions that the findings relating to the descriptiveness of the contested mark apply both with regard to the general public (the level of attention of which is average) and with regard to the specialist public in the field of information technology (the level of attention of which is higher) are correct. The applicant has not, moreover, submitted any argument seeking to complain of a possible error on the part of the Board of Appeal regarding the effect of the consumer’s level of attention depending on whether he or she is a member of the general public or of the specialist public.
42      In the light of all of the foregoing, the first plea must be rejected.
The second plea, alleging, in essence, infringement of Article 7(1)(b) of Regulation 2017/1001
43      In the context of the second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001, the applicant submits that the Board of Appeal erred in finding that the contested mark was devoid of any distinctive character. It argues that that mark fulfils the requirements of a minimum degree of distinctiveness and that, since it is not descriptive, it is capable of serving as an indication of the origin of the goods and services in respect of which it has been registered.
44      EUIPO and the intervener dispute those arguments.
45      According to settled case-law, it is clear from the wording of Article 7(1) of Regulation 2017/1001 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29; of 21 November 2013, Heede v OHIM (Matrix-Energetics), T‑313/11, not published, EU:T:2013:603, paragraph 68; and of 27 April 2017, BASF v EUIPO – Evonik Industries (DINCH), T‑721/15, not published, EU:T:2017:286, paragraph 52).
46      As is apparent from the finding set out in paragraph 39 above, the Board of Appeal did not err in law in finding that the absolute ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001 was applicable in the present case and that the contested mark could not therefore be registered as an EU trade mark, because it was caught by the absolute ground for invalidity laid down in that provision, read in conjunction with Article 59(1)(a) of Regulation 2017/1001. Consequently, it is not necessary to rule on the merits of the present plea by which the applicant complains that the Board of Appeal failed to have regard to the distinctiveness of that mark.
47      In any event, it must be pointed out that, according to settled case-law, each of the absolute grounds for refusal to register a mark that are set out in Article 7(1)(b) and (c) of Regulation 2017/1001 is independent of the others and requires separate examination. It is nevertheless the case that there is a degree of overlap between the respective scopes of those grounds (see, to that effect, judgments of 8 May 2008, Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraph 54, and of 23 January 2018, Wenger v EUIPO – Swissgear (SWISSGEAR), T‑869/16, not published, EU:T:2018:23, paragraph 74).
48      The overlap between the absolute grounds for refusal means, in particular, that a word mark which is descriptive of the characteristics of goods or services may, on that account, be devoid of any distinctive character in relation to those goods or services, without prejudice to other reasons why it may be devoid of distinctive character (order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraph 52, and judgment of 23 January 2018, SWISSGEAR, T‑869/16, not published, EU:T:2018:23, paragraph 75).
49      In the present case, it has already been held that the Board of Appeal was right in finding, in the contested decision, that the contested mark was descriptive of the goods and services in respect of which it was registered (see paragraph 39 above). It was therefore also right in finding that, on account of that descriptiveness, the contested mark did not enable the consumer to determine the origin of the goods and that it was therefore devoid of any distinctive character.
50      Moreover, the Board of Appeal analysed whether the contested mark was distinctive irrespective of its descriptiveness and concluded that there was nothing in that sign that, beyond its obvious laudatory meaning promoting the goods and services, enabled the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services covered by the contested mark. The applicant has not submitted any arguments seeking to call that analysis into question.
51      In the light of the foregoing, the second plea must be rejected.
The third plea, alleging infringement of the principles of equal treatment and of sound administration
52      The applicant puts forward a third plea, alleging infringement of the principles of equal treatment and of sound administration. It submits that the Board of Appeal did not take into account the numerous EU trade marks which it had cited and which were similar or almost identical to the contested mark. It refers in particular to an EU trade mark of which the intervener is the proprietor and to a mark in respect of which the intervener has sought registration at EUIPO, marks which consist of identical word elements and of a graphical element, namely a simple circle, that is far less complex than the emoticon in the contested mark and which it submits are registered in respect of the same goods. It argues that the Board of Appeal did not explain why the contested mark had to be declared invalid.
53      EUIPO and the intervener dispute the arguments put forward by the applicant.
54      Although, having regard to the principles of equal treatment and sound administration, EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must nevertheless be consistent with respect for the principle of legality. As a result, there cannot be equality as regards unlawful acts, and a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed in his favour or for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Such an examination must therefore be undertaken in each individual case, because the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77, and of 29 March 2019, All Star v EUIPO – Carrefour Hypermarchés (Shape of a shoe sole), T‑611/17, not published, EU:T:2019:210, paragraph 125).
55      However, in the present case, it is apparent from the foregoing examination that the Board of Appeal correctly found, on the basis of a full examination and taking into account the perception of the relevant public, that the contested mark was caught by the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation 2017/1001, with the result that the applicant cannot usefully rely, for the purposes of casting doubt on that finding, on previous decisions of EUIPO.
56      In any event, the Board of Appeal correctly pointed out, in paragraph 34 of the contested decision, as regards the EU trade mark containing the word elements ‘smart’ and ‘things’ of which the intervener is the proprietor, that that mark cannot be deemed to constitute an admission that the contested mark is distinctive.
57      Furthermore, the fact that the earlier EU trade mark of which the intervener is the proprietor has been registered is wholly without prejudice to the fact that that mark might also be caught by the absolute ground for refusal in Article 7(1)(c) of Regulation 2017/1001 and thus be liable, as the case may be, to be declared invalid in the context of invalidity proceedings.
58      What is more, it is important to take into account the fact that the earlier EU trade mark of which the intervener is the proprietor was analysed only by the examiner and that there has not therefore been any decision containing grounds that serve to explain why that mark was allowed to proceed to registration. Consequently, even if it were necessary to regard the contested mark and the mark of which the intervener is the proprietor as very similar, the Board of Appeal cannot be criticised for having adopted an approach which departs from that adopted by the examiner without expressly explaining why it was departing from that approach. It follows that the Board of Appeal did not infringe the principles of equal treatment and of sound administration. The Board of Appeal cannot, a fortiori, be criticised for not having taken the EU trade mark of which the intervener is the proprietor into account in stating the reasons for the invalidity of the contested mark.
59      In view of the foregoing, it must be held that the Board of Appeal did not in any way infringe the principles of equal treatment and of sound administration, with the result that the third plea must be rejected.
The fourth plea, alleging, in essence, infringement of Article 95(1) of Regulation 2017/1001
60      The applicant submits that the Board of Appeal infringed the principle that the burden of proof rests upon the applicant for a declaration of invalidity. It states that the Board of Appeal relied on allegedly well-known facts in order to conclude that, in 2012, the relevant public perceived the contested mark in a certain way and adds that the intervener has not provided any evidence of that public’s perception of the terms included in the contested mark at that time. Furthermore, the applicant relies on an example from the case-law according to which it was necessary to attribute limited value to a survey conducted in 2007 with regard to determining whether a mark in respect of which the application for registration was filed in 2005 was distinctive, since the opinion of that public could change significantly over a period of two years. It deduces from that that a professional survey concerning the perspective of the relevant public cannot be considered to be sufficient if it does not relate to the relevant time. It also raises the question of how the Board of Appeal could conclude that the facts concerned were so obvious that they could be classified as well known.
61      EUIPO and the intervener dispute those arguments.
The applicable regulation
62      EUIPO and the intervener disagree as regards the provision which is applicable in the present case. EUIPO submits that Article 95 of Regulation 2017/1001 is applicable. The intervener takes the view that Article 76 of Regulation No 207/2009 is the only one which can apply.
63      It must be borne in mind that, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (judgments of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45, and of 6 June 2019, Torrefazione Caffè Michele Battista v EUIPO – Battista Nino Caffè (BATTISTINO), T‑221/18, not published, EU:T:2019:382, paragraph 19).
64      Article 95 of Regulation 2017/1001 relates to the ‘examination of the facts by the Office of its own motion’ and provides that, ‘in invalidity proceedings pursuant to Article 59, [EUIPO] shall limit its examination to the grounds and arguments submitted by the parties’. Since it is a procedural provision, it must therefore apply on the date on which that regulation entered into force. Article 212 of Regulation 2017/1001 states that the regulation applies as from 1 October 2017. The proceedings before the Board of Appeal were brought on the date on which the intervener filed a notice of appeal against the Cancellation Division’s decision, namely on 7 May 2018.
65      It follows that Article 95 of Regulation 2017/1001, which is relied on as a basis for the fourth plea, is the provision which is applicable in the present case.
The alleged infringement of Article 95(1) of Regulation 2017/1001
66      Article 95(1) of Regulation 2017/1001 provides that ‘in proceedings before it [EUIPO] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. In invalidity proceedings pursuant to Article 59 [of that regulation], [EUIPO] shall limit its examination to the grounds and arguments submitted by the parties’.
67      In accordance with Article 95(1) of Regulation 2017/1001, when examining the absolute grounds for refusal, EUIPO examiners and, on appeal, the Boards of Appeal of EUIPO are required to examine the facts of their own motion in order to determine whether the mark in respect of which registration is sought comes within one of the grounds for refusal of registration set out in Article 7 of that regulation. It follows that the competent bodies of EUIPO may be led to base their decisions on facts which have not been put forward by the applicant for the mark (see, to that effect, judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 50, and of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a grey chequerboard pattern), T‑360/12, not published, EU:T:2015:214, paragraph 59).
68      However, as the legislature has expressly laid down in the last sentence of Article 95(1) of Regulation 2017/1001, in invalidity proceedings, EUIPO is to limit its examination to the grounds and arguments submitted by the parties.
69      The fact, however, remains that Article 95(1) of Regulation 2017/1001 does not prevent the adjudicating bodies of EUIPO from basing their decisions on – in addition to the facts and evidence submitted by the parties – facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (see, by analogy, judgments of 22 June 2004, Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 29; of 15 January 2013, Welte-Wenu v OHIM – Commission (EUROPEAN DRIVESHAFT SERVICES), T‑413/11, not published, EU:T:2013:12, paragraph 24; and order of 23 November 2015, Actega Terra v OHIM – Heidelberger Druckmaschinen (FoodSafe), T‑766/14, not published, EU:T:2015:913, paragraph 34).
70      It is in the light of those considerations that it must be examined whether the Board of Appeal relied on well-known facts and, if so, on which well-known facts, to justify the contested decision.
71      It must be pointed out at the outset that the applicant’s complaint that the Board of Appeal based the contested decision on well-known facts concerns only the word elements and not the figurative element of the contested mark.
72      It is apparent in essence from paragraphs 19 to 26 of the contested decision that the Board of Appeal determined the meaning of the word elements ‘smart’ and ‘things’ in the contested mark on the basis of well-known facts and also by referring to a number of decisions of the adjudicating bodies of EUIPO refusing registration of marks including the term ‘smart’ and by referring indirectly to the findings which the Cancellation Division had made on the basis of a number of documents.
73      First, it is well known that, prior to the year 2012, namely that in which the application for registration of the contested mark was filed, ‘smart things’ such as smartphones were already frequently used. As EUIPO submits, the smartphone launched by the company Apple dates back to the year 2007. Furthermore, in paragraph 19 of the contested decision, the Board of Appeal merely confirmed the Cancellation Division’s finding that the term ‘smart’ was understood as ‘operating as if by human intelligence by using automatic computer control’. However, in order to reach that finding, the Cancellation Division relied on dictionary definitions, on a set of publications and on decisions of EUIPO that predated the filing of the application for registration of the contested mark. In that regard, it is important to point out that, in paragraph 34 of the contested decision, the Board of Appeal stated that the applicant’s references ‘to the filing date as the controlling date’ did not assist it, that the dictionary definitions had been the same since the date on which the application for registration of the contested mark was filed and that the meaning of the terms concerned had never changed and had been understood by the public from the beginning.
74      Secondly, the finding that the word element ‘smart’ would also be understood in the sense of a ‘fashionable chic’ object is based on the definition that comes from an extract from the Collins online dictionary which predates the filing date of the application for registration of the contested mark, a definition which the intervener put forward during the proceedings before the Cancellation Division and to which the Board of Appeal indirectly referred in paragraph 34 of the contested decision.
75      At this stage, it must be pointed out, first, that an extract from an online dictionary constituted a source that was generally accessible to the general public in 2012. In the light of the case-law cited in paragraph 69 above, it must be held that the meanings of the term ‘smart’ that are set out in that dictionary could be learnt from generally accessible sources and therefore constituted a well-known fact. Secondly, the applicant has not submitted any argument seeking to call into question the findings, regarding the meaning of the word elements ‘smart’ and ‘things’, that are based on the intervener’s documents and the decisions of EUIPO.
76      It follows that the Board of Appeal did not in any way infringe Article 95 of Regulation 2017/1001 when it determined the relevant public’s perception of the word elements ‘smart’ and ‘things’.
77      The fourth plea must therefore be rejected.
78      In view of all of the foregoing, the action must be dismissed.
Costs
79      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs of the present proceedings, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders smart things solutions GmbH to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Samsung Electronics GmbH.
Tomljenović
Škvařilová-Pelzl
Nõmm
Delivered in open court in Luxembourg on 15 October 2020.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.