CFI dispenses registrability advice in PHARMACHECK Case

European Union

In Korsch AG v Office for Harmonization in the Internal Market (OHIM) (Case T-296/07, January 21 2009), the Court of First Instance (CFI) has upheld a decision of Fourth Board of Appeal of OHIM in which the latter had held that the mark PHARMACHECK was descriptive in relation to the goods applied for and that it lacked distinctiveness.

In September 2006 Korsch AG applied for the registration of the trademark PHARMACHECK for goods in Class 9 of the Nice Classification ("electrical and electronic apparatus and instruments for checking different parameters of products, and electrical and electronic apparatus and instruments for weighing, measuring and checking (supervision)"). In January 2007 the OHIM examiner rejected the application on the grounds that the mark was descriptive of the goods in question and that it lacked distinctiveness.
In June 2007 the Fourth Board of Appeal of OHIM upheld the examiner’s decision. The board held that the mark applied for was descriptive in relation to all the relevant goods, as consumers in English and German-speaking areas of the European Union would perceive 'PharmaCheck' as being directly linked to a potential use of the relevant instruments and apparatus. Korsch appealed to the CFI.
Korsch attempted to reduce the scope of its application by limiting the specification to exclude use at pharmacies and/or use for checking pharmaceutical products and finished pharmaceuticals. The CFI noted that an applicant could, at any time but subject to certain formalities, withdraw or modify the specification of goods for which registration was sought. However, it held that this did not entitle Korsch to limit the scope of use of the relevant goods in the context of its appeal to the CFI. Such a limitation would remove the grounds on which the board’s decision was based, and thus prevent the CFI from fulfilling its role as an appellate court.
The CFI also rejected Korsch’s argument that registration of the mark in Germany showed that it was not descriptive, reiterating its well-documented view that the Community trademark regime is wholly independent from any national system.
Korsch argued that:
  • relevant consumers would not perceive either 'pharma' or 'check' as being descriptive;
  • the word 'check' could have several meanings; and
  • 'PharmaCheck' was distinctive, as it did not exist either in German or in English and was not used in the pharmaceuticals sector in relation to the class of goods applied for.
The CFI held that both elements of the mark, as well as the mark as a whole, were descriptive.
In particular, the CFI held as follows in relation to the descriptiveness of a mark:
  • It is sufficient that a possible meaning of the mark may be used to describe a quality of the relevant goods.
  • A refusal to grant registration is justified even where the mark is descriptive of only some of the goods comprised in one of the classes for which registration is sought. It is therefore crucial for the applicant carefully to assess a mark’s descriptiveness in relation to each and any of the goods or services in any of the classes for which registration is sought.
  • The mere fact that the various components of a mark are descriptive does not automatically make that mark descriptive. However, when a mark is a neologism or a new word made up of a combination of descriptive elements, it will be held to be descriptive unless the impression created by the end result is sufficiently removed from the impression created by the combination of those elements (which the CFI found was not the case for 'PharmaCheck').
  • A word mark must be assessed independently of any specific graphic or spelling characteristics which it may assume. In any event, the absence of spacing between the two elements of the mark and the capital letter at the beginning of the first and second words in 'PharmaCheck' would not have constituted sufficient creative input to distinguish the relevant goods from those of other undertakings.
  • There is no requirement that the mark be descriptive of an essential characteristic of the relevant goods or services (contrary to Korsch’s argument that the relevant provisions in the Community Trademark Regulation (40/94) should be interpreted as implying such a qualification).
Finally, the CFI reiterated that OHIM was under no obligation to provide evidence in support of its arguments and findings, but merely to apply the relevant provisions of EU law in order to determine whether registration should be granted.
In a number of cases, the CFI has emphasized that descriptiveness is an absolute ground for refusal because descriptive terms should be available for anyone to use. However, in the present case, the CFI stated that the reason why the mark should be refused registration is that it failed to distinguish the relevant goods or services from those of other undertakings – which one may think properly belongs to the context of distinctiveness.
Marine Baudriller, Hammonds LLP, London

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