Samsung Electronics, in February 2016, has appealed before EUIPO (European Union Intellectual Property Office) to invalidate a trademark owned by a German-based company, Smart Things Solutions. This trademark (EU 10,914,836) is defined as a figurative mark for “smart:) things” in black and green.
It covers classes 9 (magnetic data carriers and smartphones), 20 (furniture) and 35 (services including advertisement). Samsung argued that the mark lacks distinctive characters, so it should be declared as an invalid mark.
Samsung argued that the term ‘smart’ means intelligent and ‘things’ can refer to any tangible and non-tangible objects or ideas. In Information Technology, it can refer to a number of things including the ‘Internet of Things’. The smiley face emoticon in the mark lacks originality and cannot be considered as a distinctive mark.
In a counter statement, Smart Things Solutions said this mark was applied in 2012 when the terms like ‘smart things’ and “Internet of Things” are not known.
In March 2018, the Cancellation Division sided with Smart Things Solutions in their decision. Samsung again appealed against this decision, stating although the term ‘smart things’ was descriptive, they do not agree that the emoticon was distinctive. According to their claim, the positive meaning of the emoticon at best reinforces the non-descriptive concept that the device is more intelligent than other devices.
On 20th November 2018, the Fourth Board of Appeal sided with Samsung and declared the mark to be invalid. They found that the terms were merely descriptive and the addition of the term things to smart does not mean anything.
Moreover, they also found the emoticon is non-distinctive in nature, and it does not help a customer to recognize and memorize the sign as a distinctive trademark. They ordered Smart Things Solutions to pay the costs of €2,420 to Samsung.