Smartbook legal nonsense: Qualcomm reply

Remember our odd partial-fax from the legal beagles of Germany firm Smartbook AG earlier this month?  The company had made a name for itself by attempting to dissuade bloggers and news sources – sometimes with threats of legal action – from using the term "smartbook", claiming it holds the trademark and would aggressively protect it from misuse.  We asked Qualcomm if they had anything to say on the matter, and their legal team has given us a statement.  Apparently, Smartbook AG haven't been quite as upfront as they might have been, and in fact the German courts have given them a spanking of their own over misrepresentation of their restraining order.

Qualcomm reckon the term "smartbook" is a generic one, and are attempting to have the trademark revoked; in the meantime, Smartbook AG have a temporary restraining order – effective in Germany only – preventing Qualcomm from using the term without a disclaimer about the current ownership.  However the order only applies to Qualcomm, not to any other company – inside or outside Germany – or news organization, and Smartbook AG have been slapped with a temporary restraining order of their own for misrepresenting exactly what the courts had ruled.

What does this mean?  Well, we're not lawyers (we just dress like them sometimes) but it seems like Smartbook AG's legal wiggling was not only over-egged but unsupported by their actual rights as German trademark holders.  Business as usual then, for us and everyone else; now we just have to pin down exactly what the difference between a smartbook and a netbook is...

"German laptop manufacturer, Smartbook AG, is engaged in an aggressive campaign to prevent the continued use of the term "smartbooks" by journalists, manufacturers and consumers. Qualcomm does not claim and has never claimed to own the term "smartbook" which it believes is a descriptive and generic term. The term is used by a number of companies, consumers and industry commentators to describe a class of devices that combine attributes of smartphones and netbooks enabled by various technology companies, including but not limited to Qualcomm.

Smartbook AG has obtained a Temporary Restraining Order in Germany against Qualcomm. We are complying with the decision, which requires Qualcomm not to use the word "smartbook" on any internet site in Germany without a disclaimer that the rights in the mark in Germany are owned by Smartbook AG. We are contesting the temporary order and are taking steps to cancel the trademark, which we contend is a generic and descriptive term that should not have been allowed as a mark in the first place. The Temporary Restraining Order applies only to Qualcomm; to our knowledge no other orders were issued.

The German court did not extend its provisional order to other parties; nor does it reach outside Germany; and nor does it prevent news organisations from reporting news. Further, it does not actually prohibit the use of the term; it allows the use of the term with the appropriate disclaimer. [Qualcomm was recently granted a Temporary Restraining Order in Germany against Smartbook AG which now prevents Smartbook AG from misrepresenting the terms of the order against Qualcomm, both on Smartbook AG's website and in letters to the media.] In fact Smartbook AG has now revised its website to correct these misrepresentations of the scope of the TRO.

Since Smartbook AG's action against Qualcomm, it has been seeking to register "smart" trademarks in other countries. The European Union and other countries have rejected these efforts on the grounds that the term "smartbook" is generic. Smartbook AG has also publicly stated it would sell the rights to the registered German trademark. Presumably, the campaign to expand the trademark registrations and the attempts to force journalists and others not to use the term are attempts to increase the sales value of the trademark." Qualcomm statement