Celltech: A Trade Mark that is more than the sum of its parts

Introduction

The European Court of Justice (ECJ) has upheld a decision of the Court of First Instance (CFI) that a Trade Mark made up of descriptive words could be registered. The CELLTECH Trade Mark covers a number of goods including 'surgical, medical, dental and veterinary apparatus and instruments', as well as several services relating to 'biological, medical and chemical sciences'. The ECJ found that although the Trade Mark could be understood as meaning 'cell technology', it was not descriptive in relation to the goods and services, and therefore could be registered.

The Law

The Community Trade Mark Regulation states that marks must fulfil certain criteria to be registered and certain marks shall not to be registered:

7(1)(b) trade marks which are devoid of any distinctive character,

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or the service.

Background

The Community Trade Mark application for CELLTECH was originally rejected by the Community Trade Mark Office (OHIM). The Examiner held that the mark simply consisted of the terms 'cell' and 'tech' (an abbreviation of 'technology') and as such was descriptive. The Board of Appeal (BoA) upheld the decision.

CFI Decision

However Celltech appealed again to the CFI, and this time the decision issued in their favour. Although definitions of the terms 'cell' and 'tech' were given, no meaning of 'cell technology' in scientific terms had been provided. As such there was no explanation as to how consumers would immediately and without further reflection make a direct association between the Trade Mark CELLTECH and pharmaceutical goods and services. Therefore CELLTECH could not be descriptive of these goods and services.

OHIM Fights Back

OHIM submitted that it is not necessary to provide a scientific definition of the expression 'cell technology', since the term is self-explanatory and would be understood by consumers to be descriptive of the goods and services.

OHIM also submitted that a Trade Mark cannot be granted when it is simply a combination of descriptive words and so the CFI should have considered the individual elements of the mark, and then explained how the Trade Mark as a whole was not descriptive.

ECJ Findings

• The CFI's comments were upheld, namely that the concept of 'cell technology' is not a well known fact and therefore has no meaning in relation to the goods/services. Fundamentally OHIM had failed to establish that CELLTECH would be descriptive of the goods/services.

• When a Trade Mark is made up of descriptive elements, if the overall impression is sufficiently far removed from the combination of the elements then the Trade Mark is not descriptive. Therefore it is not an essential to step to analyse each of the individual elements. Even though the Trade Mark could be understood as 'cell technology', it is not descriptive of the goods/services at issue.

Conclusion

The ECJ's findings demonstrate that marks that might traditionally be viewed as 'descriptive' are in fact registrable, provided they actually have no meaning in relation to the goods/services at issue. This means the tendency of examiners to analyse the definitions of the individual elements of a mark to conclude the mark is descriptive is certainly susceptible to counter-arguments, particularly since one must consider the mark as a whole.

Edward Carstairs 01 Jan 2007

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