BLUE SOFT is descriptive of contact lenses, says CFI

European Union
In Novartis AG v Office for Harmonization in the Internal Market (OHIM) (Case T-330/06, June 10 2008), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had found that the trademark BLUE SOFT was descriptive and lacked distinctiveness.
In January 2003  Novartis AG filed an application for the registration of BLUE SOFT as a Community trademark for contact lenses in Class 9 of the Nice Classification. The OHIM examiner rejected the application. The rejection was upheld by the First Board of Appeal of OHIM.
On appeal to the CFI, Novartis argued that:
  • the examination of the application had been too strict;
  • the board had misinterpreted the attention level of the relevant public because contact lenses were now sold as disposable products (without a consultation from a specialist) over the Internet and in supermarkets;
  • the board had dissected the mark and concentrated on the meanings of the words 'blue' and 'soft', whereas distinctive character should be assessed in relation to the mark as a whole;
  • the issue of distinctiveness was essentially a function of the descriptive or non-descriptive character of the mark. The descriptiveness of a mark must be connected to the fact that the relevant public makes an immediate link between the goods and the meaning of the mark. However, the mark BLUE SOFT would not immediately be interpreted by the average consumer to mean contact lenses which are blue and soft. Therefore, the mark was at worst suggestive;
  • the lack of distinctive character could not result from lack of imagination or an excess of fantasy. According to Novartis, the test was whether the mark was not purely descriptive, and the combination of two adjectives gave it a certain level of linguistic or artistic creativity; and
  • the board had disregarded its own case law, as OHIM had registered the marks PURE GREEN, TINY BLUE and RED for optical instruments and apparatus (ie, specifications of goods including contact lenses).
In response, OHIM contradicted Novartis's analysis of the nature of contact lenses, in particular that colour lenses were a marginal product. OHIM supplied evidence that colour lenses were now very popular and could not be categorized as marginal. It added that because contact lenses correct deficiencies in eyesight, consumers would pay a great deal of attention when buying them.
As to the nature of the mark, OHIM analyzed it as a juxtaposition of two descriptive adjectives. Therefore, it argued that the mark was descriptive as a whole and lacked distinctive character.
Finally, OHIM dismissed Novartis's reference to the earlier marks registered for Class 9 goods because:
  • the registrability of a mark should be determined with reference to the relevant law as interpreted at judicial level, and not at the level of the Board of Appeal of OHIM; and
  • the earlier marks were registered for a much broader specification of goods.
The CFI first considered whether the board had erred in concluding that the mark was descriptive of the goods. As the mark consisted of English words, the relevant public consisted of English-speaking consumers. According to the CFI, the average consumer would pay a great deal of attention when buying corrective contact lenses and, when buying non-corrective lenses, would usually be advised by a qualified person as to the lenses suitable for him or her. The CFI went on to consider whether, for the relevant public, there was a direct and concrete link between the mark and the goods for which registration was sought. As the goods could be both blue and soft, the link was sufficiently direct and concrete.
In defence of the board, the CFI pointed out that the board had considered the mark as a whole in its decision, contrary to what Novartis had stated in its appeal. In further defence, it stated that the legality of board decisions could be considered only on the basis of the Community Trademark Regulation (40/94), as interpreted at judicial level, and not on the basis of Board of Appeal case law.
As to the excessively strict examination of the application alleged by Novartis, the CFI stated that the board had correctly applied the conditions under which an application should be refused on grounds of descriptiveness.
The CFI therefore rejected Novartis's appeal in its entirety and awarded costs against it.
This is not a surprising decision, as the mark involved was arguably inherently descriptive of characteristics of contact lenses. Novartis may try to register SOFT BLUE again when it is able or willing to file evidence that the mark has acquired distinctiveness through use.
Chris McLeod, Hammonds, London

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