EU General Court delivers blow to Novartis in trademark appeal

The EU General Court today rejected a trademark appeal brought by Swiss pharmaceutical company Novartis.

Novartis applied to register the word sign ‘Akanto’ in 2014, to cover pharmaceutical preparations in class 5.

Chiesi Farmaceutici, an Italian pharmaceutical company, filed a notice of opposition in 2015. Chiesi’s prior registered word mark, ‘Kantos’, was registered in 2011 in class 5 for pharmaceutical products.

The Italian company claimed that Novartis’s applied-for mark would be confused with the ‘Kantos’ mark.

In 2016, the European Union Intellectual Property Office’s (EUIPO) Opposition Division rejected the opposition on the grounds that there was no likelihood of confusion between the marks.

Chiesi appealed against the decision, and its appeal was upheld by the First Board of Appeal in 2017.

The board said that the goods covered by the marks were identical and the marks themselves were highly visually similar. As this created a genuine likelihood of confusion between the marks, the board annulled the Opposition Division’s decision and refused registration of the mark.

Novartis appealed against the decision.

Today, the General Court dismissed the appeal and ordered Novartis to pay the costs of Chiesi and the EUIPO.

As noted by the board, the court said that each mark was comprised of six letters, five of which appeared in both marks in the same order.

Novartis had argued that consumers pay more attention to the beginning of marks, resulting in an overall difference between the marks.

However, the court said that this presumption does not remove the high level of visual similarity created by the overall impression of the marks.

The court also said that the board was correct to find a high degree of phonetic similarity between the marks, despite them having a different numbers of syllables.

This is because the sound of the shared element within both marks, ‘kanto’, has greater phonetic importance than the ‘a’ or ‘s’ sound in the marks, the court explained.

“The present action must accordingly be dismissed in its entirety,” the General Court determined.

Also today, September 25, Novartis announced that it will depart from its UK-based manufacturing site by the end of 2020. The decision is part of the company’s “global transformation” of its manufacturing network and product portfolio.

Nearly 400 employees will be directly affected by the decision, in addition to third party contractors.

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