Wisdom of BIOKNOWLEDGE refusal backed by CFI

In Proteome Inc v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld the refusal of an application to register BIOKNOWLEDGE.

Proteome Inc filed an application with the OHIM to register BIOKNOWLEDGE as a Community trademark for the following goods and services:

• Goods in Class 9 of the Nice Classification, namely "databases, in physical and electronic form, providing information relating to organisms, and computer software for use in searching, retrieving, compiling, organizing, managing, analyzing, communicating and/or integrating data in and among repositories of information in electronic form, including computer databases".
  
  
• Goods in Class 16, namely "printed material, including guides and manuals, concerning repositories of information relating to organisms".
  
  
• Services in Class 42, namely "information and computer services, namely developing and/or providing access to databases containing information relating to organisms, and computer software related thereto".

The application was refused and, on appeal, the Fourth Board of Appeal upheld the refusal on the grounds that the BIOKNOWLEDGE mark is (i) descriptive of the goods and services concerned, and (ii) devoid of any distinctive character. Proteome appealed to the CFI.

It was not disputed that the relevant goods and services are intended for a specialist public in the medical, pharmaceutical or other similar sectors.

The CFI held that the element 'bio' is used in the composition of words that relate to living organisms and that one definition of the word 'knowledge' is for specific information about a subject. Having regard to the relevant public, the CFI held that the juxtaposition of the terms 'bio' and 'knowledge' to form the mark BIOKNOWLEDGE prompted the conclusion that the word has at least one possible meaning, namely specific information about living organisms. It also found that a word mark must, pursuant to Article 7(1)(c) of the Community Trademark Regulation, be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned.

In the circumstances, the fact that BIOKNOWLEDGE appears as a single word does not alter the perceptions that the relevant public may have of it. With regard to the descriptions of the classes of goods and services covered by the application, the CFI held that they all refer to "organisms", namely one of the components of the mark at issue (ie, 'bio'). Moreover, the goods and services in respect of which registration was sought are either the means (i) by which information may be stored, or (ii) that make it possible to gain access to such information. Therefore, the goods and services in question contain, or make possible access to, information about organisms. There exists from the point of view of the relevant public a sufficiently direct and concrete connection between the meaning of the mark and the characteristics of the goods and services concerned.

The CFI also held that the word 'knowledge' cannot clearly be distinguished from the word 'information' or from the medium in which the information is kept. The term BIOKNOWLEDGE contains no other element or indication that might invalidate this conclusion.

Finally, the CFI rejected the arguments that BIOKNOWLEDGE is a newly invented word and has no clear commonly defined accepted meaning. It stated that the circumstances of coupling together two elements without any graphic or semantic modification does not imbue them with any additional characteristics, such as to render the sign, taken as a whole, capable of distinguishing Proteome's services from those of other undertakings.

Accordingly, the CFI upheld the decision to refuse the application.

Patricia McGovern, LK Shields Solicitors, Dublin