Refusal to Registration of the EUTM Application “Smart PRO” due to lack of distinctiveness
”The services for which an objection was raised (classes 35 and 37) belong to a highly specialized market sector. An English-speaking consumer (both general consumers and professionals in the automotive and/or petroleum industry) would understand the mark to mean: (services) intelligent professionals. […]
Both words “Smart” and “Pro” are basic English terms, widely used in the market, especially for advertising purposes. Thus, they will be recognized not only by the public in the EU member states where English is an official language (Ireland and Malta) but also by the relevant professional public across the entire EU, which is assumed to have at least a basic knowledge of English. […]
The word “SMART” is a laudatory indication of many positive qualities (such as intelligence, the ability to respond intelligently to a situation, skillfulness, insight, etc., or (for an action) performed quickly or skillfully, etc.), which as such apply to all products and services, including the services requested in Classes 35 and 37. […]
Manufacturers of products or service providers commonly use laudatory expressions to promote their products or services, which contain words like “excellent,” “outstanding,” that praise their quality or excellence. The term “SMART” belongs to this category of terms that can and are often used for promotional and laudatory purposes but do not enable consumers to identify the commercial origin of the claimed products or services (12/08/2015, R 2631/2014-1, SMART (fig), § 39; 21/01/2011, T-310/08, Executive edition, EU:T:2011:16, § 33). […]
The term “SMART” belongs to this category of generic laudatory terms that are commonly and widely used to promote products and services of all kinds. Precisely because they are commonly used in everyday language as well as in commerce, these generic laudatory terms are not considered adequate to identify the commercial origin of the services in question and, therefore, to fulfill the essential function of a trademark. Consequently, they have consistently been refused registration by the European Union court as non-distinctive (13/07/2005, T-242/02, TOP, EU:T:2005:284, § 95-97; 21/05/2015, T-203/14, Splendid, EU:T:2015:301, § 37; 23/09/2009, T-396/07, sole, EU:T:2009:353, § 17, 22). […]
The lack of distinctiveness of the term “SMART” has been recognized by numerous decisions of the Boards and the case law of the European Union courts, which have refused numerous marks consisting of or containing this term as non-distinctive and/or descriptive for various types of goods or services. […]
The relevant public would perceive the mark as a mere laudatory promotional slogan, whose function is to communicate a customer service statement as well as an inspirational or motivational statement. The relevant public will not perceive any indication of commercial origin in the mark. They will perceive nothing more than promotional information highlighting the positive aspects of the services, namely that these, compared to traditional similar services, are “the future” as they are better, include additional benefits, use cutting-edge technologies, are smart and professional, and/or are provided by professionals capable of responding intelligently to any situation, with the skill necessary to perform the service quickly or skillfully. […]
Although the mark contains certain figurative elements that confer a degree of stylization, these elements are so insignificant that they do not give the mark as a whole a distinctive character. Nothing about how these elements are combined allows the mark to fulfill its essential function in relation to the services for which protection is sought. […]
For the reasons mentioned above and pursuant to Article 7(1)(b) and Article 7(2) of the European Union Trade Mark Regulation, the application for registration of the European Union figurative trademark is rejected for all requested services.”
Source: EUIPO Case Law
