1. SMARTBOOK - the Company
     1.1.  SMARTBOOK - the Products
     1.2.  SMARTBOOK - Press and Press Releases
2.  Registered Trademarks SMARTBOOK (Germany, International)
3.  Trademark Dispute - Temporary Restraining Order against Qualcomm
4. Qualcomm Followers - Temporary Restraining Order against Lenovo
5. Further Defense and Attacks
6. More Information from SMARTBOOK

SMARTBOOK develops and sells mobile portable computers since 2006. The actual product range is presented on the Company´s website under www.smartbook.de.

New SMARTBOOKs often are introduced on the IFA tradefair in Berlin (Internationale Funkausstellung), for example in 2005, http://www.minitechnet.de/ifa05.html, and in 2008, http://www.minitechnet.de/761.html?&cHash=3542da2816&encryptionKey=47d1e990583c9c67424d369f3414728e6793d9dc2ae3429d488a7374bc85d2a0b19b62de67d46a6079a75f10934288d3&tx_ttnews[backPid]=1&tx_ttnews[tt_news]=4802.

 

During the years since 2001, the first establishment of the Brand SMARTBOOK, the Brand was frequently subject of press articles and SMARTBOOK Press Releases.

Most of the Press Releases from the period November 2002 till Novenber 2005 are still available in the Press Portal pressebox.de, http://www.pressebox.de/pressefach/issam-computer-vertriebs-gmbh/meldungen.

Most of the actual Press Releases since December 2005 are collected also in the already mentioned internet portal, http://www.pressebox.de/pressefach/smartbook-ag/meldungen.

SMARTBOOK products were often discussed in the media, for example in heise iX 12/2006, page 72, "Aufgeschlagen - von Smartbook, Fujitsu Siemens Computers, Lenovo und Toshiba: Notebooks unter Linux und Windows".A huge discussion was aroused, as SMARTBOOK placed a netbook in the online store of one of germanys big discounters Plus, "10,1-Zoll-Netbook bei Plus", November 1, 2008, http://www.heise.de/mobil/meldung/10-1-Zoll-Netbook-bei-Plus-202042.html.

Actual Press articles dealing with the SMARTBOOK trademark issue can be found in the section "News about SMARTBOOK trademark dispute".

SMARTBOOK owns the following word marks “SMARTBOOK” for among other things computers and laptops:

DPMA 304119768,
DPMA 305055151,
DPMA 305064177,

SMARTBOOK registered the following word mark "SMARTBOOK" for among other things computers and laptops:

INT (WIPO) 1015854,

registered for the regions Germany, Antigua, Austria, Australia, Benelux, Switzerland, Czech Republic, Denmark, Spain, Finland, France, Italy,  Democratic People's Republic of Korea, Republic of Korea, Monaco, Norway, Poland, Portugal, Russian Federation, Sweden, Singapore and Ukraine.

In August 2009, SMARTBOOK won a temporary restraining order against Qualcomm, http://www.forbes.com/2009/11/17/qualcomm-trademark-netbook-technology-wireless-smartbook.html.

The court states in extracts (District Court Cologne, Reference No. 31 O 482/09 - legally valid since 24th of March 2010):

Qualcomm Inc. as well as Qualcomm CDMA are not authorized to use - in the concrete manner performed by Qualcomm before the court order and cited in the order - without approval of the Smartbook AG the character sequence ’Smartbook’ in all notations in association with mobile computers – such as laptops (notebooks) – in the context of business communications expressed in technically retrievable Internet offers in the area of the Federal Republic of Germany as a mark without providing information that in the region of the Federal Republic of Germany any usage of the sign ’Smartbook’ in association with mobile computers is exclusively reserved to the SMARTBOOK AG.

According to this resolution, a fine of up to EUR 250,000.00 applies – alternatively an arrest for contempt of court – in the case of a non-compliance.

In September 2009 SMARTBOOK sent a copy of the order to Qualcomm and informed other Companies about the case to prevent follow-up law suits. In response, Qualcomm amended some of its Web sites so they are not accessible to German consumers.

UPDATE 25-03-2010:  On March 24^th 2010, Qualcomm Inc. and Qualcomm CDMA have partly accepted the order and partly withdrawn their appeal according to the rest of it. As a result, the Restraining Order now is considered res judicata (valid).

In the Court Hearing from 24th of March 2010 the judge conceded, that the use of the Trademark SMARTBOOK is allowed in case somebody wants to sell accessory for products that are branded with the Trademark SMARTBOOK. This use is known in trademark law as a descriptive use of a Trademark and this particular use is - as a legal exception - allowed.

Descriptive Use in Trademark law means for example (and almost ONLY): Nobody but Ford is allowed to sell cars using the brand Ford. But anybody is allowed to sell for example replacement parts, saying they are especially constructed for certain Ford models (that example was given by the Judge during the Court Hearing).

Following that example given by the judge, naming a so called new category of cars with the Brand Ford can never be seen as descriptive use. The same shall be applicable with the SMARTBOOK Brand SMARTBOOK.

The judge additionally pointed out, that with the now valid Restraining Order, besides the infringing behaviour named in the order from August 2009, any use of the Brand SMARTBOOK by Qualcomm is forbidden, that is about to be similar with the use cited in the Restraining Order. This is a conclusion of the so called core-rule (Kerntheorie) that says, that any behaviour similar with a forbidden Trademark use (violating its core) shall be covered by the Restraining Order that prohibits the basis Infringement.

As a final statement the Judge stated, that any further use of the trademark has very carefully to be examined, for if there is any forbidden use. It seems - so the judge - very difficult to imagine, that there shall be any space for any tolerable use of the Trademark by Qualcomm.

The trademark violating strategy of Qualcomm, as it is recognized at the moment by SMARTBOOK, is, to suborn manufacturers of mobile devices to become followers of Qualcomm in producing devices wether with Qualcomm chipsets or using at least Qualcomm Patents and - pitily - using SMARTBOOKs Brand. It seemed from SMARTBOOKs view, that quite a long time there were no followers - at least no officially named followers - for that strategy.

Then, at the CES in Las Vegas 2010, Qualcomm presented officially Lenovo, http://link.brightcove.com/services/player/bcpid59348424001?bclid=60739639001&bctid=61011138001 [instead of watching video see transcription here], as the first named follower in using Qualcomm chipsets, SMARTBOOKs Brand and the flavour of a kind of pioneer on a so called new platform - the platform of MIDs. We acknowledge the implemented technology, only the naming is not acceptable and at the same time not understandable from SMARTBOOK side.

Beside a presentation of a Lenovo Product, also Hewlett Packard was presented by Qualcomm CEO Dr. Paul Jacobs with a product using a Qualcomm chipset. The HP Representative did not use the SMARTBOOK trademark one single time, what is appreciated by SMARTBOOK. A trademark violation is not necessary, when a good technology is launched. Until now, 12th of February 2010, no single trademark violation by HP became known. We hope, that this is a result of our information policy and once again ask all manufaturers not to follow the idea of Qualcomm, naming new products with the SMARTBOOK Brand.

Although Lenovo was informed about the SMARTBOOK trademark situation, in January 2010 Lenovo launched a press release, describing the CES-Product as a SMARTBOOK, following Qualcomms strategy.

In February 2010 SMARTBOOK won the second temporary restraining order in the trademark violation issue, this time against Lenovo Germany, http://www.zdnetasia.com/news/hardware/0,39042972,62061170,00.htm.

The court states in extracts (District Court Cologne, Ref. No. 31 O 43/10,  - not legally established):

“Without approval by Smartbook AG, Lenovo must refrain from using the character sequence ‘Smartbook’ in all writing systems in association with mobile computers – such as laptops (notebooks) – as part of commercial correspondence in the Federal Republic of Germany[..].“

According to this resolution, a fine of up to EUR 250,000.00 applies – alternatively an arrest for contempt of court – in the case of a non-compliance.

In February 2010 SMARTBOOK sent a copy of the order to Lenovo and once again informed other Companies about the case to prevent follow-up law suits.

On May 5^th 2010, SMARTBOOK AG has - caused by formal matters and considering the pending main proceedings against the violator - withdrawn the Restraining Order. Meanwhile, the main proceedings have been settled with an agreement, while the parties formally maintained their legal positions.

Due to a very open information policy, SMARTBOOK hopes, that further Trademark violations will not occur.

At the moment, SMARTBOOK has given a signal in form of two temporary restraining orders. In case, violation will occur in any country SMARTBOOKs Brand has a trademark protection, SMARTBOOK will have to defend its rights at any of these places. SMARTBOOK achnowledges, that any manufacturer - hopefully not even thinking about a violation of SMARTBOOK Brand - knows about the necessity on SMARTBOOKS side and behaves in respect of this.

SMARTBOOK has a look at the movements on the markets, SMARTBOOK has a protection for its Brand.

For further information about the Brand SMARTBOOK or the company itself, please feel free to contact SMARTBOOK via E-Mail: info(a)smartbook.de.