'BioID' is descriptive, rules Court of First Instance

In BioID AG v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld an OHIM decision, refusing the registration of the term 'BioID.®'. The court agreed that the term is directly descriptive of the qualities of the goods and services to which it relates.

BioID applied to the OHIM to register 'BioID.®' as a Community trademark for computer software, hardware and various services relating to "the computer-aided identification and verification of live organisms based on one or more specific biometric characteristics". The OHIM refused registration, holding that BioID's target consumers are likely to perceive the term 'BioID' as a "clear and unequivocal descriptive statement in respect of the goods and services specified". Further, it considered the graphic elements (ie, the full stop followed by the '®' symbol) too minimal in nature to endow the term with any distinctive character. BioID appealed and the case went to the Court of First Instance.

The court upheld the OHIM's decision. It agreed with the OHIM's view that the term 'BioID' is directly descriptive of the qualities of the specified goods and services. The court reasoned that the term is comprised of abbreviations that are part of the reference language in this field. 'Bio', said the court, could be an abbreviation of 'biological', 'biometrical' or 'biology'; 'ID' is short for 'identification'. The court concluded that BioID's target consumers are likely to understand the term to be an abbreviation, and thereby direct description, of 'biometrical identification'.

The court also agreed with the OHIM's overall conclusions on the graphic element of the term. However, it noted that the OHIM had used the wrong test in coming to those conclusions. The OHIM, said the court, should not have weighed up the relative importance or dominance of the graphic and the word elements. The court stated that where a composite term is at issue, if it has one distinctive element, the term as a whole cannot be devoid of distinctive character. It reasoned that the dominance of the distinctive element is irrelevant.

The court also dismissed any suggestion that, because the term had been accepted for registration in Germany and the United States, it should necessarily be registrable as a Community trademark. It emphasized that the Community trademark regime is autonomous and independent of any national system - even EU national systems (including Germany) that are supposed to apply equivalent provisions under the Community Trademark Directive.

Anna Carboni and Sarah Gahagan, Linklaters, London