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Thursday, 14 April 2005

CELLTECH APPEAL ALLOWED

In Case T-260/03 Celltech R&D Ltd v OHIM , posted on the ECJ website this morning, the Court of First Instance allowed Celltech's appeal against OHIM's refusal to allow registration as a Community trade mark of the word CELLTECH for goods in classes 5 and 10 and for services in Class 42. The examiner and the Board of Appeal considered the word CELLTECH to be descriptive of cell technology products and therefore to be lacking in distinctive character. The CFI held as follows:
"36 ... neither the Board of Appeal nor OHIM has given an explanation of the meaning in scientific terms of cell technology. OHIM merely produced as an annex to its response an extract from the Collins English Dictionary showing the definitions of the terms ‘cell’ and ‘tech’.

37 Neither the Board of Appeal nor OHIM explained in what way those terms give any information about the intended purpose and nature of the goods and services referred to in the application for registration, in particular about the way in which those goods and services would be applied to cell technology or how they would result from it.

38 ... the goods and services to which the application for registration relates are in general terms pharmaceutical goods and services and, on that account, have a connection with bodies which are composed of cells. However, the Board of Appeal did not show that the relevant public would immediately and without further reflection make a definite and direct association between the pharmaceutical goods and services claimed and the meaning of the word mark CELLTECH ...

39 ... even supposing that the goods and services concerned may be used for functional purposes involving cell technology, that fact would not be sufficient for a finding that the word mark CELLTECH may serve to designate their intended purpose. Such use of them constitutes at most one of many possible areas of use, but not their technical function ...

40 ... the Board of Appeal did not establish that the term ‘celltech’, even taken as meaning cell technology, is such as to be immediately and unambiguously perceived as designating activities in the field of cell technology and products, apparatus and equipment used in connection with or resulting from such activities. Nor did it establish that the public targeted will view it purely as an indication of the type of goods and services designated by the sign.

41 Consequently, the Court must hold that the Board of Appeal did not demonstrate that the word mark CELLTECH was descriptive of the goods and services in respect of which registration was sought.

...

44 The Board of Appeal did not establish that the sign concerned, taken as a whole, would not allow the public targeted to distinguish the applicant’s goods and services from those having a different commercial origin.

45 ... the Court must hold that the Board of Appeal did not establish that the trade mark claimed was prevented from registration ... Since the Board of Appeal did not set out any other grounds for a finding that the mark was nonetheless devoid of any distinctive character for the purposes of Article 7(1)(b), it was wrong in holding that the word mark CELLTECH was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94".
The IPKat concurs. While CELLTECH is not the best example of a sparklingly original and non-derivative word mark, it appears to fulfil the meagre criteria of distinctiveness which the Community trade mark Regulation imposes.

More cell technology here and here

1 comment:

Anonymous said...

“We cannot live for ourselves alone. Our lives are connected by a thousand invisible threads, and along these sympathetic fibers, our actions run as causes and return to us as results.”
- Herman Melville

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