General Court dismisses Novartis trademark appeal
The European General Court dismissed an appeal from Novartis over one of its figurative trademarks yesterday, January 31.
Switzerland-based Novartis filed an application for the registration of an EU trademark in October 2012. The trademark consists of a beige circle on a white square background, with the beige patch being encompassed by small knobs.
The goods that the trademark covered fall under class 5 for “pharmaceutical preparations for the treatment of dementia of Alzheimer’s type”.
Novartis manufactures Exelon (rivastigmine), a transdermal patch used to treat Alzheimer’s.
Novartis’ trademark was registered in March 2013, but a few months later, South Korea-based generics company SK Chemicals filed an application for a declaration of invalidity of the trademark, claiming that Novartis had acted in bad faith when filing its application.
SK Chemicals also makes transdermal patches for the administration of rivastigmine.
The trademark was found to be invalid in its entirety by the EUIPO’s Cancellation Division in September 2014, and the Fifth Board of Appeal of EUIPO dismissed an appeal against the decision by Novartis in November the following year.
Novartis’s trademark was declared invalid on the ground that it “was composed of a sign consisting exclusively of the shape of the product necessary to obtain a technical result...”.
Yesterday, the General Court agreed with the Board of Appeal that the essential characteristics of the contested mark are the square shape; the overlapping protective plastic layer (which is represented by the white stripe in the background of the mark); the circular area in the centre; and the arrangement of the knobs around the central circular area.
The court found that the essential characteristics of the trademark were all functional and that the colour of the patch is not an essential characteristic.
According to the court, thetechnical function of the square shape was that it “facilitates the packaging and storage of the transdermal patches”.
The court dismissed the appeal and ordered Novartis to pay the costs.
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