The IPKat brings you an OHIM distinctiveness case, this time concerning an application for the shape of a medicinal tablet. Pharmacia applied to register the shape of a tablet with a diamond-shaped inset as a CTM for pharmaceuticals in Class 5. The examiner refused to register the mark for lack of distinctiveness under Art.7(1)(b) of Regulation 40/94. Pharmacia appealed to the OHIM Board of Appeal.
The appeal was dismissed. Points of interest include:
The IPKat notes that this sort of market-analysis based approach is inherent in the test that the ECJ has set out for the distinctiveness of shapes. He notes that the Board has identified the moment at which distinctiveness must be determined as the moment of purchase – not an uncontroversial proposition.
* Both medical professions and patients who were ordinary consumers constituted
the relevant public.
* It is not necessary under Art.7(1)(b) for a trade mark to provide precise information concerning the identity of the manufacturer of the goods or provider of the services. Instead, the sign only needs to enable consumers to distinguish the goods or services it designates from the goods or services originating from other companies. Accordingly, registration of the mark could not be refused in the event that there was even a minimum degree of distinctive character. This rule applied equally to 3D marks.
* In this case, the tablet had two distinguishing features – its shape and its ornamentation. The shape was the basic ordinary shape of a medicine tablet. The oval shape and round edges, as well as the lack of hard edges, facilitated swallowing and so the shape could not function as a trade mark. The ornamentation was not an essential functional element of the product and instead was an arbitrary choice made by the manufacturer. In theory therefore it could function as a distinctive sign.
* In order to determine whether the trade mark application possessed the minimum degree of distinctiveness needed for registration, it was necessary to look at the behaviour of the relevant consumer when purchasing pharmaceuticals and the role played by trade marks in this framework. The Board proceeded to conduct an analysis of how relevant consumers use trade marks when purchasing medicines.
*Specialist medical professions would prescribe medicines using their word mark or the name of the active ingredient contained therein. They would not use 3D elements of the medicines to distinguish their origin.
* The average consumer might purchase over-the-counter pharmaceuticals either because of a recommendation or through self-diagnosis. In all cases he would either know the name he was looking for or would browse for a preparation meeting his medical requirements. Thus, he was unlikely to take the shape of the mark into account at the moment of purchase.
* The figurative and three-dimensional components of the mark could function perfectly well as a distinguishing element under different circumstances and with respect to different goods and services. For these goods though, they lacked distinctiveness.
* Though consumers might become accustomed to recognising pharmaceuticals administered outside of their original packaging by colour or ornamentation, this was not enough to preclude the grounds or refusal based on Art.7(1)(b). The fact that consumers behaved in that way did not automatically mean that the appearance of the product would be perceived as a trade mark. In any event, claims based on the actual manner of use of the sign would have to be specifically proved by Pharmacia and might be taken into account solely in the context of Art.7(3).
How to brand tablets here
Other tablet cases found hard to swallow here and here