Case T-139/08

The Smiley Company SPRL

v

Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM)

‛Community trade mark — International registration designating the European Community — Figurative mark representing half a smiley smile — Absolute ground for refusal — Lack of distinctive character — Article 146(1) and Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 151(1) and Article 7(1)(b) of Regulation (EC) No 207/2009)’

Judgment of the Court of First Instance (First Chamber), 29 September 2009 II ‐ 3538

Summary of the Judgment

The figurative sign representing half a smiley smile, in respect of which registration as a Community trade mark is sought, in essence, for precious metals, goods made of precious metals, items of jewellery and timepieces, all in Class 14, leatherware and luggage in Class 18 and clothing and clothing accessories in Class 25 of the Nice Agreement, is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark. There is no aspect of the trade mark applied for which may be easily and instantly memorised by an even relatively attentive general public in the Community and which would make it possible for it to be perceived immediately as an indication of the commercial origin of the goods in question. It will be perceived exclusively as a decorative element whether it relates to goods in Class 14 or to those in Classes 18 and 25. Thus, the mark applied for does not make it possible for any of the goods at issue to be distinguished from competing goods. That finding cannot be called into question by the fact that the relevant public is used to perceiving figurative signs that are simply stripes as trade marks or that numerous manufacturers have registered such marks to designate goods in Class 25. The mark applied for is therefore a very simple and banal design, which has an exclusively decorative function and would not be perceived as an indication of the commercial origin of the goods in question. (see paras 17, 31, 32, 37)

As regards the distinctive character of a mark within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, a sign which is excessively simple and is constituted by a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use. That being so, a finding that a mark has distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services it covers and to distinguish them from those of other undertakings. Whether or not a mark may serve a decorative or ornamental purpose is irrelevant for the purposes of assessing its distinctive character. A sign which fulfils functions other than that of a trade mark in the traditional sense of the term is only distinctive for the purposes of Article 7(1)(b) of Regulation No 40/94, however, if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin. It is thus necessary for that sign, even if it is decorative, to have a minimum degree of distinctive character. (see paras 26, 27, 30)