The English word "smart" has in the meantime found its way into the German language. Even if it is a neologism, the trademark "smart2future" lacks special syntactic or semantic features that make the chosen combination appear unusual and sufficiently far away from the factual indication.
The word mark "smart2future" was applied for registration in the register kept at the German Patent and Trademark Office on July 7, 2019, for the goods and services in classes 9, 12 and 42.
By decisions of the German Patent and Trademark Office, Trademark Office for Class 42, of July 13, 2020, and of May 4, 2021, the latter of which was issued in the reminder proceedings and, in addition, granted the application for reinstatement in the earlier state of affairs for payment of the reminder fee, the application was rejected on the basis of the version of the list of goods and services of March 4, 2020, pursuant to Sections 8 (2) No. 1, 37 (1) Trademark Act. In that regard, it was stated that the trademark applied for lacked any distinctive character. The public would therefore not perceive the applied-for trademark "smart2future" as an indication of a specific company. Already at the time of its application, the trademark applied for would not have had the minimum degree of distinctiveness required under Sec. 8 (2) No. 1 Trademark Act.
The applicant contests this with its appeal of June 4, 2021, whereby the list of goods and services was restricted to classes 7 and 9.
The applicant is of the opinion that the word combination "smart2future" is a fictitious word or trademark creatively combined from three individual components without a linguistic statement or without a linguistic word sense.
The responsible Senate states that the English word "smart" has in the meantime found its way into the German language and means "alert, clever, resourceful, tactically smart, chic, elegant". Devices or machines that can learn, automatically adapt and adjust their behaviour to the environment are also described as "smart."
The numeral "2" is also frequently used in domestic usage in the context of words, sayings or phrases of the English language in place of the phonetically identical word "to". The applicant's indication that Google searches on the terms "smart2future", "smart 2 future", "smart two future" and "smart two future" led to the website of his company "smart2future Communicator" does not call into question the said understanding of the digit "2" as a synonym for the English preposition "to". Finding the website using the search terms just mentioned does not say anything about the understanding of the traffic, which, moreover, has been used to combinations with "2" in place of "to" for a long time.
"Future" is a noun of the English basic vocabulary with the meaning "Zukunft", so that the trademark "smart2future" in its entirety is understood by the addressed professional and end consumer circles in the sense of "smart/intelligent into the future". Thus, it conveys a close descriptive relationship to the remaining goods.
The responsible senate further states that the list of goods and services cannot be restricted in such a way that they do not exhibit a certain characteristic which is expressly designated by the trademark. However, this is precisely what the applicant's restriction of the list of goods and services would have the effect of doing, by excluding a smart functionality and/or an enabling smart component for the goods claimed by way of disclaimer, although the sign "smart2future" expressly addresses this characteristic of the goods.
According to the Senate, the sign applied for consists merely of a combination of descriptive elements. The appeal was dismissed.