Mixed results in BIOGENERIX rulings

In Ratiopharm GmbH v Office for Harmonization in the Internal Market (OHIM) (Cases T-47/07 and T-48/07, September 16 2008), the Court of First Instance (CFI) has upheld the Board of Appeal's decision to refuse registration of the mark BIOGENERIX for biotechnological goods and services, but reversed the board's decision to refuse registration of the mark for "chemical products for preserving foodstuffs".

In 2000 Ratiopharm GmbH applied for the registration of the word mark BIOGENERIX ('B', 'G' and 'X' being written in capital letters) as a Community trademark for biotechnological goods and services in Classes 5, 35, 40 and 42 of the Nice Classification. In 2002 Ratiopharm applied for the registration of BIOGENERIX as a Community trademark for the class headings equivalent to all goods in Classes 1, 3 and 5. OHIM refused both applications on absolute grounds.

In the first case, OHIM refused the application on the grounds that the mark lacked distinctive character and was exclusively descriptive of all the goods and services covered. Ratiopharm appealed. The Board of Appeal of OHIM upheld the examiner’s decision, stating that even if the absence of the mark from dictionaries meant that it was a neologism, its phonetic identity with the word 'biogenerics' made it descriptive of biotechnological pharmaceutical products not covered by patents. The use of the capital letters 'G' and 'X', as well as the substitution of 'X' for the lower case letters 'c' and 's', did not overcome this objection. The board confirmed that the mark was also devoid of distinctive character.

Ratiopharm appealed to the CFI on three counts:

The mark possessed the minimum requisite degree of distinctiveness because the capital 'X' at the end of the mark was completely unusual and made the mark a neologism, the capital 'G' in the middle of the mark was another unusual element going against orthographic rules and the overall impression created by the mark would be affected by the three capital letters (two of which came at the beginning and end of the mark), the unusual nature of the mark not being undermined by the fact that these elements had no effect on the pronunciation of the mark.
The mark was not descriptive because the element 'generiX' was distinguishable from the word 'generics' by the capital 'X'. Mere similarity was insufficient to make the mark descriptive.
The mark did not designate generic pharmaceutical products arising from biotechnology because it was not 'biogenerics' but BIOGENERIX, and there were no generic pharmaceutical products arising from biotechnology. The evidence put forward by the examiner and the Board of Appeal, which was mainly from the United States and intended for business specialists such as investors, was irrelevant because the goods covered by the application were directed at doctors and consumers in the European Union, while the services were directed at pharmaceutical companies.

First, the CFI considered the issue of descriptiveness. It endorsed the Board of Appeal’s assessment that the relevant public was partly specialist and partly a combination of consumers and professionals. It went on to reiterate the board’s analysis that:

the mark could be broken down into 'bio' (meaning life or living organisms) and 'generics' (meaning unpatented medicines or foodstuffs);
the relevant public would perceive the mark as 'biogenerics' - that is, relating directly to essential characteristics of the goods and services; and
the term 'biogenerics' was generally used descriptively in the field of generic products arising from biotechnology.

Having set out these assessments, the CFI upheld the board’s view that the mark was descriptive for the goods and services in question because:

on the one hand, it was an exact description of, or had descriptive character in relation to, the goods; and
on the other, it informed the relevant public of the characteristics of the services.

The CFI concluded that the descriptiveness of the mark was sufficiently pronounced for the relevant public to make an immediate, concrete and direct connection with the goods and services. The meaning of the mark and Ratiopharm's arguments did nothing to counter this for the following reasons:

The argument that pharmaceutical products arising from biotechnology did not exist did not mean that the mark was not descriptive because the criterion for assessment of descriptiveness was the perception of the relevant public, which would be that the mark related to a pharmaceutical, medical or scientific product. Meanwhile, the evidence put forward by OHIM showed that professional and specialist consumers use the term 'biogenerics' despite its technical imprecision.
The visual differences between the mark applied for and 'biogenerics' made no difference phonetically and were therefore negligible.
As the mark had at least one potentially descriptive meaning, it was objectionable on grounds of descriptiveness in relation to unpatented biotechnological products and related services.

Therefore, the CFI upheld the board's decision under Article 7(1)(b) of the Community Trademark Regulation (40/94) and declined to consider whether the mark had the minimum requisite level of distinctiveness, as it had already found that the mark was unregistrable on grounds of descriptiveness.

The second case followed a similar course: the mark was initially rejected in relation to "chemical products for use in industry and science; chemical products for preserving foodstuffs" in Class 1 and "pharmaceutical and veterinary products; dietetic substances for medical use" in Class 5. This rejection was upheld by the Board of Appeal.

The arguments of Ratiopharm and the CFI were essentially the same. The only substantive difference was that the CFI held that the mark was not descriptive in relation to "chemical products for preserving foodstuffs" in Class 1 and thus considered whether it was devoid of distinctive character for these goods. It stated that the board’s reasoning (ie, that the purely descriptive nature of the mark meant that it also lacked distinctiveness) was insufficient. Therefore, the CFI held that the mark was distinctive for "chemical products for preserving foodstuffs" and overturned the board's decision for these goods.

Ratiopharm, which describes itself on its website as 'Europe’s leading generics brand', has thus - subject to further appeal to the European Court of Justice (ECJ) - lost its first application in its entirety and its second application in respect of the goods which are likely to be of most importance to it under this mark. Its BioGeneriX website describes how it aims to “develop bioengineered drugs for known targets” and includes an aesthetically pleasing logo version of the mark. It may seek to register this version with OHIM instead of going to the ECJ.

Chris McLeod, Hammonds LLP, London

Mixed results in BIOGENERIX rulings

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