PHARMARESEARCH held to be descriptive

European Union

In Korsch AG v Office for Harmonization in the Internal Market (OHIM) (Case T-464/07, June 17 2009), the Court of First Instance (CFI) has upheld a refusal to register the mark PHARMARESEARCH on the grounds that it lacked distinctive character and was descriptive under Articles 7(1)(b) and 7(1)(c) of the Community Trademark Regulation (40/94).

Korsch AG applied for the registration of PHARMARESEARCH as a Community trademark (CTM) for “electric and electronic apparatus, and instruments for entering, managing, recording, testing, monitoring and transmitting product and machine data and external data” in Class 9 of the Nice Classification.

The OHIM examiner rejected the application and the Board of Appeal affirmed. Korsch appealed to the CFI. Following the filing of the appeal, Korsch requested that the application be limited to the following goods pursuant to Article 44 of the regulation:

electric and electronic apparatus, and instruments for entering, managing, recording, testing, monitoring and transmitting products and machines data and external data on presses (machines).

Under Article 44, an applicant may withdraw or restrict its CTM application at any time. However, Article 135(4) of the CFI's Rules of Procedure prohibits any alteration of the subject matter of the case heard by the Board of Appeal of OHIM. Therefore, theoretically, a limitation that would be permitted under Article 44 of the regulation may be prohibited under Article 135(4).

In this case, Korsch's request was accepted as it sought only the partial annulment of the board's decision and, therefore, would not result in an alteration of the subject matter of the case.

The CFI held that even though the term 'pharma' as such does not exist in the English language, it will be understood by the English-speaking public as referring to pharmaceuticals. Moreover, the juxtaposition of the terms 'pharma' and 'research' is not unusual, since it follows the rules of English grammar. The CFI thus concluded that the impression created by the PHARMARESEARCH mark was not sufficiently removed from that created by the juxtaposition of its components. The presence of a capital 'R' in the middle of the mark was deemed insufficient to render the mark distinctive.

Finally, Korsch invoked the fact that OHIM had allowed the registration of the mark RESEARCHPHARM in 2008. The CFI dismissed this argument, pointing out that the goods and services covered by that mark (“printed matter and organization of scientific expositions”) were different from those covered by Korsch's application.

Consequently, the CFI concluded that the Board of Appeal had not infringed Article 7(1)(c) of the regulation. Pursuant to well-established case law, there was no need to consider whether Article 7(1)(b) had been infringed.

The decision is not surprising in that it follows the OHIM’s current practice and the CFI's case law on absolute grounds for refusal.

Karina Dimidjian-Lecomte and Cristina Bercial-Chaumier, Bureau Casalonga-Josse, Alicante

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