APPLIED MOLECULAR EVOLUTION registration refused

In Applied Molecular Evolution Inc v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld a decision to refuse the registration of APPLIED MOLECULAR EVOLUTION as a Community trademark.

Applied Molecular Evolution Inc (AME) brought an application before the OHIM to register APPLIED MOLECULAR EVOLUTION as a Community trademark in Class 42 of the Nice Classification for research activities directed towards the molecular engineering of compounds. The OHIM refused registration and AME appealed to the CFI.

Core argumentation before the CFI revolved around the descriptiveness of the word 'evolution' in relation to the services at issue. Having established that the relevant public (in light of the intended use of the trademark) would be aware of the possibilities offered by molecular alteration, the CFI held that the relevant public would see the word 'evolution' in the applied for combination (ie, in conjunction with the word 'molecular') as connoting the deliberate alteration of molecules. It acknowledged that evolution can have a number of meanings but pointed out that, under Article 7(1)(c) of the Community Trademark Regulation, a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned. This interpretation follows the guidelines set out by the European Court of Justice in DOUBLEMINT (see ECJ reverses DOUBLEMINT decision).

The CFI also rejected AME's argument that the OHIM's Board of Appeal had attributed incorrect definitions to the words in the mark because it had failed to take note of exact dictionary references. The CFI emphasized that the board is entitled to supply definitions of particular terms of its own motion without being bound to rely on specific documents, provided that the definition can be regarded as commonly accepted.

In addition, the CFI dismissed AME's contention that not all of the services covered by the application related to the alteration of genetic material, meaning that the mark could not be said to be descriptive. The CFI reasoned that the way in which the services were defined in the application made it impossible for the Board of Appeal to distinguish whether or not the relevant services directly referred to the alteration of genetic material. The court concluded that the board was correct to refuse registration for all the services concerned.

The ruling effectively underlines the already widely established common understanding that a trademark cannot be registered where the applicant's competitors would expect to use similar or identical wording to describe their goods and/or services. Together with DOUBLEMINT, the ruling gives welcome guidance on the significance of individual words in the assessment of the descriptiveness of a trademark as a whole.

Esa Korkeamäki, HH Partners Oy, Helsinki