Novartis fails to secure ‘smart’ TM for contact lenses
Switzerland-based Novartis today, March 12, failed to convince the EU General Court that its ‘Smartsurface’ trademark should be registered for contact lenses.
In March 2017, Novartis applied to register ‘Smartsurface’ as a European trademark at the European Union Intellectual Property Office (EUIPO), covering contact lenses in class 9.
But, in July 2017, the EUIPO examiner rejected the application, finding that the trademark was descriptive and devoid of distinctive character.
Novartis appealed against the decision, but in May 2018, the EUIPO’s Second Board of Appeal dismissed the appeal.
In its decision, the appeal board found that the public would perceive the trademark as referring to the surface of a contact lens having sophisticated characteristics, such as responsiveness to the environment.
The board also rejected Novartis’s arguments relating to the existence of a family of trademarks containing the word ‘smart’ and earlier registrations containing that word.
Finally, the Second Board of Appeal concluded that the mark was devoid of distinctive character, after finding that that the trademark would be seen as merely conveying information indicating an essential feature of the goods.
Again, Novartis appealed against the decision.
Before the General Court, Novartis argued that the appeal board was wrong to introduce a definition of the word ‘smart’ that had not been upheld by the examiner and to not give Novartis an opportunity to respond.
The word ‘smart’ was defined by the appeal board as “of a device or machine: appearing to have a degree of intelligence; able to react or respond to differing requirements”.
“It follows that the applicant cannot criticise the Board of Appeal for having failed to invite it to submit observations on the definition referred to above. Its allegations that the procedures before EUIPO were unfair are therefore entirely unfounded,” said the General Court.
Novartis also disputed the finding that the public would be able to establish a relationship between the applied-for trademark and the contact lenses to enable the public to immediately perceive a description of those goods or one of their characteristics.
The court responded: “However, none of the arguments raised by the applicant is capable of calling into question the finding of the Board of Appeal in this regard.”
Novartis also criticised the appeal board for finding that ‘Smartsurface’ was devoid of distinctive character, but this was also dismissed by the General Court.
The General Court dismissed the appeal and ordered Novartis to pay costs.
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