The Judgement of the General Court of 15 December 2016, in the case Novartis AG versus EUIPO, analyses Article 7(1) of Regulation No 207/2009.

On August 2014, Novartis AG filed two applications for registration of the figurative signs

as EU trade marks for Class 5 of the Nice Agreement with the description “Pharmaceutical preparations”.

By decision of 24 November 2014, the examiner rejected the applications for registration on the ground that the marks applied for were devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 because they were reminiscent of the shape of the goods covered and because, in any event, the signs were too simple to be distinctive.

On January 2015, the applicant filed two notices of appeal with EUIPO, which were dismissed by decisions of 23 September 2015, of the Fifth Board of Appeal of EUIPO.

The applicant claimed to the Court alleging infringement of Article 7(1)(b) of Regulation No 207/2009, based on the fact that the marks applied for, far from resembling pills, are instead abstract and ambiguous, and have a unique character that makes them recognisable by reason of the concave impression created by the different shades of green or grey. In the applicant’s view, it is much more likely that one of the following would be seen in the signs: a crescent where different shades of grey or green seem to create the abstract image of an eclipse; a representation of the letter ‘C’; or an elegant and unusual design.

The Court agrees with the applicant regarding the similarity of the signs to crescents or the letter ‘C’, so if they are perceived as shapes with no link to any pharmaceutical products, they cannot be regarded as being devoid of distinctive character on the ground that they give rise to a two-dimensional representation of those goods.

In the assessment whether the signs at issue are too simple to be capable of having the minimum distinctive character necessary, the Court found that the signs do not represent a geometrical figure, and as they are reminiscent of both the letter ‘C’ and a crescent moon, and because the different shades of colour create a play of light and shadow and the curves that constitute them are of varying thickness and have a slight twist, the signs at issue display characteristics which are such as to distinguish them in the eyes of the public, and they thus satisfy the requirements set out in case-law, for which reasons they are endowed with the minimum distinctive character necessary for registration.

Consequently, the Court annuls the decision of the Fifth Board of Appeal of EUIPO and allows the application to proceed before EUIPO pursuant to the finding that the absolute ground for refusal in Article 7(1)(b) of Regulation No 207/2009 does not preclude the registration of the marks applied for.