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
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
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
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
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.
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
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1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
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