Juxtaposition of words held not to be sufficiently creative

European Union
In PromoCell bioscience alive GmbH Biomedizinische Produkte v Office for Harmonization in the Internal Market (OHIM) (Case T-113/09, February 9 2010), the General Court has upheld OHIM’s refusal to register the word mark SUPPLEMENTPACK on the grounds that it lacked distinctive character.

In November 2006 PromoCell bioscience alive GmbH Biomedizinische Produkte applied to register the mark for goods and services in Classes 1, 5, 41 and 42 of the Nice Classification (including chemical and pharmaceutical preparations). The OHIM examiner rejected the application on the above grounds in May 2008. PromoCell appealed to the Board of Appeal of OHIM. The board upheld the examiner’s decision, stating that the mark was formed of two common English words and that the relevant public would immediately understand the meaning of 'SupplementPack'.

On appeal to the General Court, PromoCell argued that the board had erroneously based its decision on the understanding of 'SupplementPack' in common parlance. Professionals - being those in the fields of chemistry and pharmaceuticals and the organization of conferences - were not immediately capable of relating the word sign SUPPLEMENTPACK to a specific technical term. The board’s understanding of the term 'SupplementPack' did not justify the conclusion that the term was merely descriptive and thus not eligible for registration. PromoCell added that 'SupplementPack' could function as a trademark because of the use of the capital letters 'S' and 'P', which was unusual in English grammar.

The General Court ran through the established case law before confirming the board's decision that the mark was descriptive and lacked distinctive character. As regards the unusual way of writing 'SupplementPack' (resulting from the fact that the two words were juxtaposed without spaces and that each of the two juxtaposed words begins with a capital letter), the court agreed with the board's conclusion that it did not amount to evidence of any creative aspect capable of distinguishing the goods and services for which registration was sought from those of other undertakings. Furthermore, the court argued that the effect of the juxtaposition without spaces was completely offset by the fact that the two words constituting the mark began with a capital letter. The court thus upheld the board's conclusion that the word mark SUPPLEMENTPACK would be read, heard and understood by the relevant public as 'supplement pack'.

The court further held that the board had correctly ruled that the mark SUPPLEMENTPACK enabled the relevant public to discern immediately, and without any further reflection, a specific and direct connection with the chemical and pharmaceutical preparations covered by the application in Classes 1 and 5. This was also the case for the educational and related services in Classes 41 and 42.

The court went on to dismiss PromoCell's argument that the US Patent and Trademark Office had allowed the registration of the mark in the United States. The court reiterated that decisions of other trademark authorities were not binding on it and that OHIM had no discretion to make decisions on the basis of anything apart from the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)). The appeal was thus rejected with costs against PromoCell.

Florian Traub and Chris McLeod, Hammonds LLP, London

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