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In a case before the General Court, the court had to decide whether two curved lines in the shape of a ‘C’ above lacked distinctiveness on the basis of representing an outline of an oval-shaped pharmaceutical pill, and for being too simple.

Background to the Dispute:

In August 2014, the applicant, Novartis, filed two applications to register the above figurative signs as EU trade marks in Class 5, for “Pharmaceutical preparations”:

The applications were rejected on the basis that they were devoid of distinctive character because (i) they were shaped like the goods that they covered and (ii) they were too simple to be distinctive.

Upon appeal, the Fifth Board of Appeal agreed with the examiner’s findings, adding the following reasons:

  • The attention of detail of the intended audience (healthcare professionals and end consumers) is relatively high;
  • Considering the goods applied for, the marks would be perceived as showing the stylised outline of an oval-shaped pharmaceutical lozenge or pill viewed from above;
  • The marks did not allow consumers to differentiate between manufacturers of pharmaceutical preparations; and
  • As pills, tablets and lozenges are often round or oval shaped, the marks applied for do not depart significantly from the norms of the sector.

Proceedings before the General Court:

Before the General Court, the applicant argued that the marks are abstract and ambiguous, and do not resemble pills. This was in particular due to the different shades of colour used to create a concave impression that give the relevant public different options of interpretation.

The EUIPO argued that this may be true in the abstract, but once affixed to the packaging of the goods they cover, they have the two-dimensional appearance of a pill. Their argument was based on their assertion that marks cannot be assessed in the abstract.

The Court outlined the criteria for assessing the distinctiveness of marks and confirmed that the approach is the same for three-dimensional marks consisting of the appearance of the goods themselves and that the authority from these cases is applicable to figurative marks consisting of a two-dimensional representation. In relation to these cases, the Court held that “only a mark which departs significantly from the norms or customs in the sector, and is therefore liable to fulfil its essential function as an indication of origin is not devoid of distinctive character…”

In this case, the General Court rejected the Board of Appeal’s reasoning. It held that the marks are more like crescents, with the twist in the signs and the shadows caused by the differing shades of colour moving them further away from being perceived as a pill. Although the distinctive character of a sign should be assessed according to the goods it covers, affixing a mark to the packaging of the goods cannot make the relevant public perceive the sign as a representation of those goods when the usual shape of the goods is not similar to the mark.

In terms of the simplicity of the marks, the Court held that there must be aspects of the sign that are “easily and instantly memorised by the relevant public and which would make it possible for those signs to be perceived immediately as indications of the commercial origin of the goods they cover…” Regarding the marks at issue, the Court relied upon the same aspects of the marks referred to above (i.e. the crescent shape, the twist in the signs and the different shades of colour) to find that the signs are not too simple to be distinctive.

Conclusion

In finding that the marks do not resemble pharmaceutical pills and that the marks are too simple, the General Court held that the marks applied for do have the minimum distinctive character necessary for registration.

Cases T-678/15 and T-679/15