Action brought on 21 December 2011 - Smart Technologies/OHMI (SMART NOTEBOOK)

(Case T-648/11)

Language of the case: English

Parties

Applicant: Smart Technologies ULC (Calgary, Canada) (represented by: M. Edenborough, QC, T. Elias, Barrister, and R. Harrison, Solicitor)

Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Form of order sought

Annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 29 September 2011 in case R 942/2011-1;

In the alternative, alter the contested decision of the First Board of Appeal to state that the application possesses sufficient distinctive character that no objection to its registration may be raised under Articles 7(1)(b) or (c) of the Regulation; and

Order that the costs of the proceedings be borne by the defendant.

Pleas in law and main arguments

Community trade mark concerned: The word mark "SMART NOTEBOOK" for goods in class 9 - Community trade mark application No 9049313

Decision of the Examiner: Rejected the Community trade mark application

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Articles 7(1)(b) and 7(1)(c) of Council Regulation No 207/2009, as the Board of Appeal wrongly found that the Community trade mark application was devoid of any distinctive character. Further, the applicant submits that the application is not descriptive of the applicant's goods, rather it has a distinctive character that enables the application to function as an indication of trade origin for the goods in question. In particular the applicant submits that the Board: (a) applied the wrong test when considering whether or not a mark was descriptive of the goods for which registration was sought; (b) failed to consider the fact that the applicant had a family of "Smart" marks, and wrongly confused this issue with the concept of acquired distinctiveness under Article 7(3) of the Regulation; and (c) wrongly dismissed the submission relating to legitimate expectation in the circumstances where the other marks upon which reliance was placed were all owned by the applicant, as opposed to marks owned by third parties.

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