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Thursday, 19 April 2007

Celltech flexes its muscle against OHIM


There must be some fairly annoyed people roaming round Alicante today following the publication in the Curia website of the European Court of Justice (ECJ) ruling on OHIM's appeal in Case C-273/05 P, Office for Harmonisation in the Internal Market v Celltech R&D Ltd. The latter, expensively represented by Daniel Alexander QC and Geoffrey Hobbs QC, couldn't have been too happy in the first place at having the favourable decision of the Court of First Instance (CFI) appealed in a saga which has gone on for far too long.

Right: a different Celltech - one of many businesses that share the term with the CTM applicant in this case.

Nearly seven years ago Celltech applied to register the word CELLTECH as a Community trade mark for ‘pharmaceutical, veterinary and sanitary preparations, compounds and substances’, ‘surgical, medical, dental and veterinary apparatus and instruments’ and ‘research and development services; consultancy services; all relating to the biological, medical and chemical sciences’ (Classes 5, 10 and 42). The examiner rejected the application: since the word CELLTECH consisted exclusively of the grammatically correct combination of the two terms ‘cell’ and ‘tech’ (the abbreviation of ‘technical’ or ‘technology’), it was both non-distinctive and descriptive and could not therefore serve as an indicator of origin for the goods and services for which registration was sought, all of which fell within the field of cell technology. The Second Board of Appeal agreed and dismissed Celltech’s appeal: since the word CELLTECH would be immediately and unambiguously perceived as a term designating activities in the field of cell technology and products, the connection between the goods and services and the trade mark was not sufficiently indirect to endow the mark with even a minimum level of inherent distinctiveness.

Celltech then appealed to the CFI. Noting that the Board of Appeal found the mark devoid of distinctive character, the CFI considered that it had to establish first whether the Board had shown that that mark was descriptive of those goods and services. The relevant public was taken to be not only specialist consumers from the medical field who know about scientific terms in their sphere of activity, regardless of their mother tongue, but also average English-speaking consumers. The CFI agreed that at least one meaning of the mark CELLTECH was ‘cell technology’ but then went on to ask whether the Board had shown that CELLTECH for was descriptive of the goods and services referred to in the actual application and concluded that it had not. In its opinion

* neither the Examiner nor the Board explained the meaning of 'cell technology' in scientific terms, doing no more than appending dictionary definitions of the terms “cell” and “tech”.

* it was not explained how "cell" or "tech" gave any information about the intended purpose and nature of the goods and services for which registration was sought;

* it was not therefore shown that the relevant public would immediately and without further reflection make a definite and direct association between the word CELLTECH and the goods and services claimed;

* even a finding that the goods and services may be used for functional purposes involving cell technology would not add up to a finding that the CELLTECH served to designate their intended purpose.
On this basis the Board did not establish that (i) the applied-for word would 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 or that (ii) that the public targeted would see it purely as an indication of the type of goods and services designated by the sign. The Board's decision was thus annulled.

OHIM appealed on five grounds, all of which were dismissed by the ECJ. In essence,
* the CFI did not annul the Board's decision for failure to state reasons, but because it did not establish that the mark CELLTECH, understood as meaning ‘cell technology’, was descriptive of the goods and services referred to in the application. The Board implicitly held that cell technology was a well-known scientific fact and that the activities forming part of that scientific method or applying it enable the production or manufacture of pharmaceutical, veterinary or sanitary preparations, compounds or substances, surgical, medical, dental or veterinary apparatus or instruments and/or that such activities required the use of such preparations, compounds or substances as well as such apparatus or instruments. In so doing, the Board based its decision on facts that it examined of its own motion.

* it could not be said that the CFI made an error of law by holding that, as a matter of principle, an area of use of goods or services does not fall within the characteristics of the goods or services whose description, by a mark for which registration is sought in respect of those goods or services, is prohibited under Article 7(1)(c) of Regulation 40/94 ["trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; "]: whether this holding was correct or not, it was made for the sake of completeness and was not part of the decision;

* the CFI had provided, to the requisite legal standard the reasons for its finding that the Board did not show that the mark applied for was descriptive of the goods and services in question;

* it could not be said that the CFI held that a word or an expression designating a scientific method which enables the manufacture of pharmaceutical, veterinary or hygienic preparations, compounds or substances or the supply of services relating to the biological, medical and chemical sciences is not descriptive of the goods and services obtained by that method. All the CFI did was to annul the Board's decision on the ground that it had not established that cell technology was a method of production of the goods or of supply of the services referred to in the application;

* as to the suitability of CELLTECH itself, whatever OHIM might say, ECJ case-law does not demand that the prior analysis of each element of which a mark is composed is an essential step. On the contrary, marks are supposed to be assessed as a whole. Here, the CFI properly assessed the descriptive character of the mark CELLTECH, when considered as a whole, and concluded that it was not established that the mark, even understood as meaning ‘cell technology’, was descriptive of the goods and services referred to in the application.
The IPKat takes this as a ringing endorsement of the "global assessment" test and hopes that all further salami-slicing of trade marks will cease forthwith. Merpel says, this is just really a question of hitting OHIM over the head a few times for doing what almost all of us intuitively would have done - rejecting an application to register a mark on the ground that it's pathetic.

Celltech here
Different Celltechs here, here

2 comments:

Anonymous said...

Something must be wrong here as I find myself agreeing with both the CFI and ECJ. Merpel - the mark is not pathetic at all; in service class 42 it may well be pathetic, but not necessarily for these goods.

As for 'salami slicing', that's quite an interesting point. Personally, I think that that is something that someone who is 'taught' English may well indulge in. A natural English speaker is better placed to say whether the sum of an invented/conjoined word is more than the sum of the parts.

Ilanah said...

A bit of speculation here, but I wonder, even amongst native English speakers, are those who learnt to read through phonics more prone to 'salami slicing'?

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