BIOMONITOR is descriptive, says CFI

European Union
In Biotronik GmbH & Co v Office for Harmonization in the Internal Market (OHIM) (Case T-257/08, July 9 2009), the Court of First Instance (CFI) has refused to register the trademark BIOMONITOR on the grounds that it was descriptive.

Biotronik GmbH applied for the registration of BIOMONITOR as a Community trademark for goods and services in Classes 9, 10 and 38 of the Nice Classification. The OHIM examiner refused the application on the grounds that the mark was purely descriptive, in particular with regard to consumers in German or English-speaking countries of the European Union. Biotronik appealed to the Fourth Board of Appeal of OHIM, which upheld the decision of the examiner.

Biotronik appealed to the CFI, claiming that the mark was not descriptive and had distinctive character.

The CFI first noted that the mark would be descriptive if there was a link which, for the relevant public, immediately brought to mind the goods and services in question and/or their characteristics. The goods listed in the application were specialist medical apparatus which analyzed vital body functions and were aimed at professional use. As a result, the CFI felt that the relevant public consisted of medical professionals - and, more specifically, doctors, private clinics and hospitals. The CFI also felt that since the grounds for refusal were raised only in respect of two languages (ie, English and German), the relevant public would be limited to German or English speakers.

Having isolated the relevant public, the CFI considered the mark itself, which consisted of two words in juxtaposition ('bio' and 'monitor'). First, it noted that ‘bio’ was a prefix of Greek origin, meaning ‘biology’, ‘biological’ or ‘to do with living organisms’. Second, the word ‘monitor’ means 'to observe, supervise, measure or test at regular intervals’ in English. In German, ‘monitor’ means a technical device relating to control or supervision. The juxtaposition of the two words to create the word 'biomonitor' would thus indicate some kind of medical apparatus which dealt with biological data.

The CFI admitted that although a juxtaposition of two descriptive words was, in principle, descriptive, the mark could be registered if it formed a coined term due to the unusual combination of the words. In the present case, the word ‘biomonitor’ was not considered to be of unusual character. The capital ‘M’ in the middle of the word was negligible and did not have any particular creativity. Moreover, the juxtaposition of the words conformed to the grammatical rules in English and German.

As a result, the CFI held that the relevant section of the public would consider the word ‘biomonitor’ to be descriptive of a medical device able to control or supervise body functions. It was noted that the goods in question often required technical devices, such as monitors. Therefore, the mark was clearly descriptive.

Further, Biotronik’s argument that the word ‘biomonitor’ would be registrable in the United Kingdom and had already been registered in Switzerland was considered to be immaterial. The CFI highlighted, yet again, that the EU regime is autonomous in its application and independent of any national system.

On the basis that Biotronik's mark was descriptive of the goods and services at issue, the CFI rejected Biotronik’s appeal. There was no need to consider the second limb of Biotronik’s argument, since Article 7 of the Community Trademark Regulation (40/94) prohibited registration if any one of the grounds were fulfilled.

This decision reflects the CFI’s willingness to uphold the public interest element of Article 7, which seeks to enable free use of marks which describe or characterize goods or services. Applicants would do well to ensure that any mark which might be viewed as descriptive or non-distinctive incorporates a different spelling, unusual grammar or a logo element to make it more distinctive and override the descriptiveness.

Ellen Forrest-Charde and Chris McLeod, Hammonds LLP

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