ECJ dismisses OHIM CELLTECH appeal

In Office for Harmonization in the Internal Market v Celltech R&D Ltd, the European Court of Justice (ECJ) has dismissed the Office for Harmonization in the Internal Market's (OHIM) appeal against the European Court of First Instance's (CFI) decision to allow the registration of CELLTECH as a Community trademark.

Nearly seven years ago Celltech R&D Ltd applied to register the word 'celltech' as a Community trademark 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 of the Nice Classification). The OHIM examiner rejected the application, holding that 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. It noted that since the mark 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 trademark was not sufficiently indirect to endow the mark with even a minimum level of inherent distinctiveness.

Celltech then appealed to the CFI (see CELLTECH not descriptive for pharmaceutical goods and services). 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 the mark was descriptive of the goods and services concerned. 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 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'. In particular, the CFI noted that:

• 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 mark CELLTECH and the goods and services claimed; and
  
  
• 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 mark CELLTECH served to designate their intended purpose.
  

On this basis, the board did not establish that: (i) the applied-for mark would immediately and unambiguously be 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 (ii) that the public targeted would see it purely as an indication of the type of goods and services designated by the sign. It therefore annulled the board's decision.

OHIM appealed on five grounds, all of which were dismissed by the ECJ. The ECJ's judgment included the following findings:

• 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 the Community Trademark Regulation. The ECJ explained that the CFI examined this issue for the sake of completeness and it was not relevant to the findings under appeal.
  
  
• 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 grounds 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.

Jeremy Phillips, IP Consultant to Slaughter and May, London