Novartis' CARE TO CARE mark held to lack distinctiveness for healthcare services
In Novartis AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-68/13, January 23 2014), the General Court has upheld a decision of the First Board of Appeal of OHIM (Case R 953/2012-1) rejecting Novartis’ Community trademark (CTM) application for the word mark CARE TO CARE under Article 7(1)(b) of the Community Trademark Regulation (207/2009) (marks devoid of any distinctive character).
On August 10 2011 Novartis filed an application (No 010224657) to register the word mark CARE TO CARE as a CTM for "educational services, including caregivers and patient’s relatives support programs relating to Alzheimer’s disease" in Class 41 and "medical services, including providing medical information to caregivers and patient’s relatives relating to Alzheimer’s disease" in Class 42 of the Nice Classification.
On April 30 2012 the OHIM examiner refused the application with respect to all the services on the ground that the mark promoted the properties of the services provided and did not function as an indication of origin. In a decision dated November 29 2012, the First Board of Appeal of OHIM confirmed the examiner’s decision. In particular, the Board of Appeal held, among other things, that the mark applied for:
- was a banal expression which referred plainly to the progressive change from one type of care to another;
- indicated to the relevant public the inherent nature of the educational and medical services covered by the sign; and
- conveyed a message that was immediately intelligible to any consumer without further thought.
In its action before the General Court, Novartis relied on a single plea in law, alleging infringement of Article 7(1)(b) of the regulation. In particular, Novartis put forward four heads of claim:
- infringement of the rules governing the burden of proof;
- infringement of the principle that only applications for marks which are immediately intelligible to any consumer without further thought may be rejected;
- infringement of the principles set out by the Court of Justice of the European Union in Audi v OHIM (Case C-398/08 P); and
- infringement of OHIM’s previous practice.
The General Court rejected all heads of claim and dismissed Novartis’ action in its entirety. The court’s reasoning may be summarised as follows:
- The relevant public consisted of health professionals with a high level of attention and of the families of patients suffering from Alzheimer’s disease, who are particularly well informed as to the seriousness and the effects of that disease (Paragraph 23).
- The Board of Appeal had correctly relied on well-known facts: “It is generally well known that Alzheimer’s disease is incurable and characterised by a progressive deterioration in the state of health of people who suffer from it" and that “the treatment of such a disease requires a gradual adaptation of care, which may include, at certain times, the transfer of the person with the disease from hospital to his home and vice versa where there is a deterioration in the patient’s condition”(Paragraph 24).
- In the field of health, the English word ‘care’ designates the treatment given to a patient by a doctor or other health workers and is the root of the word ‘carer’, which designates a person who looks after a sick person. Accordingly, the said term is closely linked with the health sector (Paragraph 35).
- The relevant public knows that the development of the disease requires progressive changes in care, in particular the change from care in a hospital environment to home care and vice versa (Paragraph 36).
- The expression ‘care to care’ will be perceived as a reference to the change from one type of care to another and, therefore, as a banal expression alluding to an inherent characteristic of educational and medical services relating to Alzheimer’s disease (Paragraph 37).
- For the relevant public and with regard to the services at issue, the expression ‘care to care’ does not have a sufficient degree of originality to be capable of indicating to the consumer the commercial origin of those services (Paragraph 39).
- The mark applied for will be understood immediately by the relevant public as a slogan relating to the objective of the services covered by the mark applied for, namely the care required for patients suffering from Alzheimer’s disease; accordingly, it does not possess the necessary degree of originality or resonance, requiring at least some interpretation (Paragraph 47).
- Contrary to Novartis’ argumentation, the judgment of the General Court in Best Buy Concepts v OHIM (Case T-122/01) is not outdated. In contrast, it still forms part of the settled case law regarding the distinctive character of trademarks and has not been altered by subsequent case law (Paragraph 48).
- The principles of legality and legal certainty prevail over the principles of equal treatment and sound administration, in the sense that OHIM may effectively deviate from its own practice. The examination of any application must be stringent and full, in order to prevent trademarks from being improperly registered, and such an examination must be undertaken in each individual case (Paragraph 51).
Nicolas K Dontas, Dontas Law Sarl, Luxembourg
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