Smart Technologies ULC v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2012-07-12
23. According to settled case-law, the distinctiveness of a mark within the meaning of that article means that the mark serves to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (Joined Cases C-468/01 P to C-472/01 P Procter & Gamble  v OHIM [2004] ECR I-5141, paragraph 32; Case C-64/02 P OHIM  v Erpo Möbelwerk  [2004] ECR I-10031, paragraph 42; Case C-304/06 P Eurohypo  v OHIM [2008] ECR I-3297, paragraph 66; and Audi  v OHIM , paragraph 33).
24. Again, according to settled case-law, such distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign ( Procter & Gamble  v OHIM , paragraph 33; Eurohypo  v OHIM , paragraph 67; and Audi  v OHIM , paragraph 34).
25. As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded by virtue of such use ( OHIM  v Erpo Möbelwerk , paragraph 41, and Audi  v OHIM , paragraph 35). As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign ( OHIM  v Erpo Möbelwerk , paragraph 32, and Audi  v OHIM , paragraph 36).
26. However, it is apparent from the case-law of the Court that, whilst the criteria for assessing distinctiveness are the same for the various categories of trade mark, it may become apparent, when applying those criteria, that the relevant public’s perception is not necessarily the same in relation to each of those categories and that, therefore, it may prove more difficult to establish the distinctiveness of the marks in certain categories than of those in other categories ( Procter & Gamble  v OHIM , paragraph 36; OHIM  v Erpo Möbelwerk , paragraph 34, and Audi  v OHIM , paragraph 37).
27. While the Court has not excluded the possibility that that case-law may, in certain circumstances, be relevant to word marks consisting of advertising slogans, it has however stated that difficulties in establishing distinctiveness which may be associated with word marks consisting of advertising slogans because of their very nature — difficulties which it is legitimate to take into account — do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness as interpreted in the case-law referred to in paragraphs 23 and 24 of the present judgment (see OHIM  v Erpo Möbelwerk , paragraphs 35 and 36, and Audi  v OHIM , paragraph 38).
28. The Court has also held that an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(1)(b) of Regulation No 40/94 ( OHIM  v Erpo Möbelwerk , paragraphs 31 and 32, and Audi  v OHIM , paragraph 39).
29. Moreover, the Court has observed that, while it is true that a mark possesses distinctive character only in so far as it serves to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, the mere fact that a mark is perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character ( Audi  v OHIM , paragraph 44).
30. On that point, the Court has noted, in particular, that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character ( Audi  v OHIM , paragraph 45).
32. In that regard, it must be held that, contrary to the submission of Smart Technologies, the findings of the General Court in paragraph 31 of the judgment under appeal do not disclose a misreading of the principles established by the Court of Justice, inter alia in paragraph 45 of Audi  v OHIM , in which the Court held that, in so far as the public perceives the mark as an indication of the commercial origin of goods or services, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character.
33. Although the formulation used by the General Court in paragraph 31 of the judgment under appeal is different from that used in paragraph 45 of the judgment in Audi  v OHIM , by that formulation, read in its context, the General Court confirmed that the distinctive character of the mark applied for depends only on whether it is perceived, by the relevant public, as an indication of the commercial origin of the goods and services concerned, whilst accepting that that mark may be understood by the same public as both a promotional formula and an indication of commercial origin.
34. In that regard, it must be noted that not only did the General Court expressly refer, in paragraph 29 of the judgment under appeal, to the points set out in paragraphs 44 and 45 of the judgment in Audi  v OHIM , but also, in paragraph 32 and the following paragraphs of its judgment, made an analysis of the distinctiveness of the trade mark applied for, based on those points. In particular, as is apparent from paragraph 40 of the judgment under appeal, that analysis led the General Court to the conclusion that the relevant public, when reading that sign, would not tend to perceive in the sign any particular indication of commercial origin, beyond the promotional information that the goods in question make the performance of a complex task simple.
40. Next, the fact that the term ‘slogan’ is not expressly used in Regulation No 40/94 is not such as to establish that the General Court considered advertising slogans to be a subcategory of trade marks. Article 4 of the regulation, in listing the types of sign capable of constituting a trade mark within the meaning of the regulation, in no way had the purpose of establishing or defining different categories of trade marks consisting of signs. The concept of a ‘slogan’, like that of a ‘word sign’ or ‘word mark’ was developed by the case-law on the interpretation of that regulation, without such slogans being considered to be a special subcategory of word signs, or even a distinct category thereof. The Court has, on several occasions, classified word signs with a laudatory connotation as slogans (see, inter alia, Case C-517/99 Merz & Krell  [2001] ECR I-6959, paragraphs 39 and 40; OHIM  v Erpo Möbelwerk paragraphs 35, 36, 41 and 44; and Audi  v OHIM , paragraphs 56, 58, and 59).
49. According to the settled case-law of the Court, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered (see, inter alia, Procter & Gamble , paragraph 44; Case C-286/04 P Eurocermex  v OHIM  [2005] ECR I-5797, paragraph 22; and Case C-238/06 P Develey  v OHIM  [2007] ECR I-9375, paragraph 82).
51. In any event, as to the question whether the trade mark applied for has reached the distinctiveness threshold, it must be pointed out that the findings in relation to the attentiveness, the perception and the attitude of the relevant public concern appraisals of fact (see, to that effect, Case C-144/06 P Henkel  v OHIM  [2007] ECR I-8109, paragraph 51; orders of 9 July 2010 in Case C-461/09 P The Wellcome Foundation  v OHIM , paragraph 20, and in Case C-87/11 P Fidelio  v OHIM , paragraph 66).
52. Under Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on a point of law only. The General Court thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C-16/06 P Les Éditions Albert René  v OHIM  [2008] ECR I-10053, paragraph 68; Case C-254/09 P Calvin Klein Trademark Trust  v OHIM  [2010] ECR I-7989, paragraph 49; and Case C-88/11 P LG Electronics  v OHIM [2011] ECR I-0000, paragraph 36).
53. Such distortion must be obvious from the documents on the Court’s file, without there being any need to carry out a new assessment of the facts and the evidence (see Les Éditions Albert René  v OHIM , paragraph 69; Calvin Klein Trademark Trust  v OHIM , paragraph 50; and LG Electronics  v OHIM , paragraph 37).
57. As regards the second ground relied on by Smart Technologies in support of its appeal, it must be recalled that, according to the settled case-law of the Court, the finding, by the General Court, as to whether the facts on which the Board of Appeal of OHIM has based its decision are well known or not is a factual assessment which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal (Case C-25/05 P Storck  v OHIM  [2006] ECR I-5719, paragraph 53; orders of 3 June 2009 in Case C-394/08 P Zipcar  v OHIM , paragraph 42, and of 15 January 2010 in Case C-579/08 P Messer Group  v Air Products and Chemicals , paragraph 37).