BLUE SOFT is descriptive of contact lenses, says CFI

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:

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 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.