EU General Court proves it can be a real heartbreaker when it comes to trade mark applications

If a company holds a trade mark registration consisting of a heart for pharmaceutical drugs, would it then be permissible for that same company to register that identical logo for cardiovascular research services?

The EU General Court (GC) answered this question in the negative in a decision handed down a few weeks ago … precisely on Valentine’s Day. 

Background

In July 2016 Bayer Intellectual Property (the Applicant) sough to register the figurative sign above as an EU trade mark. The application was for services in Classes 42 (Conducting scientific studies in the field of cardiovascular diseases) and 44 (Medical services in the field of cardiovascular diseases) of the Nice Classification.

In November 2016, the EUIPO examiner rejected the application holding that the sign was devoid of any distinctive character under Article 7(1)(b) of Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR)).

The applicant appealed the decision to the First Board of Appeal of EUIPO (the Board). This rejected the application on the same ground as the examiner. In particular, it considered that the mark would be perceived by the relevant public as the representation of a heart and, therefore, as a reference to the fact that the services in question concern the field of cardiology.

The applicant subsequently appealed to the GC claiming that, by not rightly taking into account the relevant public’s high level of attention, the Board had violated Article 7(1)(b) EUTMR together with the principles of equal treatment and sound administration.

The decision

Failure to take account high level of attention of the relevant public

The GC first noted that a trade mark must allow the relevant public to distinguish the goods and services covered by that mark from those of other undertakings without having to pay particular attention (Mag Instrument v OHIM, C‑136/02 P). In this regard, the threshold for distinctiveness is not dependent on the public’s level of attention (Smart Technologies v OHIM, C‑311/11 P).

Lack of distinctive character of the mark applied for

As regards the issue of distinctive character, the applicant maintained that the relevant public would perceive the mark as the letter ‘v’ for ‘vericiguat’ rather than a representation of a heart. Even if perceived as a heart, the Board had disregarded the unusual representation thereof in respect of the services in question. In Novartis v EUIPO, T‑678/15 and T‑679/15 the GC had established that a sign which departs significantly from the norm or customs of the sector is capable of being distinctive.

The GC disagreed.

The sign was not likely to be perceived as representing the letter ‘v’ of the word ‘vericiguat’. This was because the curved shape towards the inside of the sign from both ends of the black element differ from the ordinary representation of the letter ‘v’ and thus made it closer to the representation of a heart.

Novartis v EUIPO concerned situations in which the trade mark applied for was either a three-dimensional mark consisting of the appearance of the designated goods, or a figurative mark consisting of a two-dimensional representation of those goods. In the present case, the sign was not capable of representing the appearance of the services in question, nor was it a two-dimensional representation of them.

Even if considered a heart – the applicant added – the distinctive character would stem from the increased thickness of the bottom-left outline of that heart, the fact that the heart is less symmetrical than the 306 representations that it had presented before the Board and, from the fact that the top-left of the heart is not downward facing.

This was not enough for the GC: such characteristics would still make it incapable of performing its function as a badge of origin for the services in question, since those characteristics would not likely be able to transmit a message which the relevant public could remember.

Violation of the principles of equal treatment and sound administration

The applicant also submitted that that EUIPO had violated the principles of equal treatment and sound administration by refusing to register the mark applied for despite the fact that it had already accepted registration of an identical trade mark covering pharmaceutical preparations in Class 5.

In this regard, the GC first noted that the EUIPO must exercise its powers in accordance with the principles of legality and legal certainty. The examination of any trade mark application – in each individual case – must be stringent and comprehensive, in order to prevent marks from being improperly registered. The registration of a sign depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal.

It follows from EUIPO v Puma, C‑564/16 P (see also here) that it is incumbent upon the Boards of Appeal, when deciding to take a different view from the one adopted in decisions already taken in respect of similar applications relied on before them, to provide an explicit statement of their reasoning for departing from those decisions. However, such a duty is less important in relation to an assessment which strictly depends on the mark applied for than on factual findings which do not relate to that very mark.

In the present case, the examination of the distinctiveness strictly depended on the mark in question, and not on findings of fact such as those relied upon by the applicant. Accordingly, the Board was able to limit itself by indicating that the applicant was not entitled to rely on previous decisions of EUIPO in order to reject the finding that the mark applied for was caught by the ground of refusal based on Article 7(1)(b) EUTMR.

Moreover, it could not be disputed that the Board of Appeal, in any event, explicitly stated the reason why it departed from the finding made in the previous decision relied upon by the applicant. It found, in essence, that the goods at issue in the previous application did not specifically relate to cardiology, so that those goods did not, contrary to the services at issue in the present proceedings, have a ‘directly and immediately recognisable relationship with a human heart’.

Conclusion

The significance of this decision is that – even if a company holds a particular trade mark – that same trade mark may not necessarily be accepted for registration for other types of goods and services offered by that same undertaking. It also appears to be significantly difficult for applicants’ to invoke successfully violations of principles like those equal treatment and sound administration (see for example earlier post on EUIPO v Puma, C‑564/16 P, reported on this blog).