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28 November 2018Trademarks

Samsung convinces EUIPO to invalidate ‘smart’ TM

Samsung Electronics has emerged victorious at the European Union Intellectual Property Office (EUIPO) after convincing it to declare a trademark invalid.

The trademark at issue, EU number 10,914,836, is a figurative mark for ‘smart:)things’ in black and green.

Germany-based Smart Things Solutions owns the trademark, which covers classes 9, including magnetic data carriers and smart phones; 20, for items such as furniture; and class 35 for services including advertis-ing.

In February 2016, Samsung requested that the trademark be declared invalid because it lacked any distinctive character.

Samsung reasoned that ‘smart’ stands for intelligent, that ‘things’ can refer to any tangible or intan-gible object or concept, including in the field of IT, in particular to the ‘internet of things’, and that the figurative element (the smiley face emoticon) is banal and non-distinctive.

However, Smart Things Solutions hit back, claiming that on the date of the application (May 2012), the term ‘internet of things’ was not yet known and the term ‘smart things’ didn’t appear in the dictionary.

Earlier this year, in March, the EUIPO’s Cancellation Division rejected Samsung’s request and ordered the company to bear the costs.

The division concluded that, at the time of application, the term ‘smart things’ was descriptive, but that the emoticon endowed the mark with at least a minimum degree of distinctive character.

In May, Samsung appealed against the decision, stating that while it agreed the term ‘smart things’ was descriptive, it disagreed with division’s reasoning on the emoticon.

Samsung claimed that the positive connotation conveyed by the ‘smiley’ emoticon resulted not in a dis-tinctive sign but in “reinforcing the descriptive and non-distinctive message of the word elements, by con-veying the message that the device is more clever and user-friendly than an ‘ordinary’ device”, said the EUIPO.

On November 20, the EUIPO’s Fourth Board of Appeal handed down its decision, siding with Samsung and finding the trademark to be invalid.

“It is difficult to understand why the contested decision did not put one and one together and did not take the appropriate conclusion for the mark as a whole,” said the appeal board.

The board found that the words ‘smart’ and ‘things’ were descriptive, and that the addition of the term ‘things’ to ‘smart’ doesn’t add anything.

It went on to conclude that the emoticon is non-distinctive.

According to the board, Smart Things Solutions’ contention that the terms were not known/in the diction-ary at the application date does not help its argument.

“What may be true is that more and more items in everyday life incorporate ‘smart’ functions but that on-ly confirms the finding of non-distinctiveness,” said the board.

In the decision, the board added there is no public interest in allowing trademark protection for “terms that refer to technologically advanced solutions which are not yet so popular on the filing date but prone to become so in the years thereafter”.

Finally, the board concluded that there is nothing in the sign that might, beyond its laudatory meaning of promoting the goods and services, enable the relevant public to memorise the sign easily and instantly as a distinctive trademark.

The trademark was declared invalid and the appeal board ordered Smart Things Solutions to pay costs of €2,420 ($2,731).

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