Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Celltech R&D Ltd.

• Jurisdiction: European Union
• ECLI: ECLI:EU:C:2006:786
• Court: Court of Justice (European Union)
• Docket Number: C-273/05
• Date: 14 December 2006
• Celex Number: 62005CC0273
• Procedure Type: Recurso de anulación

OPINION OF ADVOCATE GENERAL

Sharpston

delivered on 14 December 2006 (1)

Case C-273/05 P

Office for Harmonisation in the Internal Market (Trade Marks and Designs)

v

Celltech R&D Ltd

1. The present appeal has been brought by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’) against the judgment of the Court of First Instance in Celltech R&D v OHIM (2) annulling a decision of the Second Board of Appeal of OHIM (‘the Board of Appeal’). The appeal concerns in particular the correct interpretation and application of the concepts of distinctiveness and descriptiveness for the purpose of, respectively, Article 7(1)(b) and (c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (‘the Regulation’). (3)

The Regulation

2. Article 7(1) of the Regulation lists what are known as the ‘absolute’ grounds for refusal of registration of a trade mark. Absolute grounds automatically preclude registration, in contrast to ‘relative’ grounds (such as similarity between the proposed mark and an existing mark) which may or may not preclude registration depending on the circumstances.

3. Article 7(1) provides in so far as is relevant:

‘The following shall not be registered:

…

(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 service.’

4. I shall refer to signs or indications falling within Article 7(1)(c) as ‘descriptive’.

5. In interpreting Article 7(1)(b) and (c) of the Regulation, account should also be taken of the Court’s case-law on the interpretation of the identically-worded Article 3(1)(b) and (c) of the Trade Marks Directive. (4)

6. Article 73 of the Regulation provides that decisions of the Office ‘shall state the reasons on which they are based’.

Background to the present case

7. In June 2000, Celltech R&D Ltd (‘the trade-mark applicant’ or ‘the applicant’) filed an application to register the word mark CELLTECH as a Community trade mark. Registration was sought for (i) pharmaceutical, veterinary and sanitary preparations, compounds and substances, falling within class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, (ii) surgical, medical, dental and veterinary apparatus and instruments, falling within class 10 thereof, and (iii) research and development services and consultancy services, all relating to the biological, medical and chemical sciences, falling with class 42.

8. In June 2002, the OHIM examiner (‘the Examiner’) rejected the application for registration on the basis of Article 7(1)(b) and (c) of the Regulation. She took the view that the sign at issue consisted of the grammatically correct combination of the two terms ‘cell’ and ‘tech’ (an abbreviation of ‘technical’ or ‘technology’). As a consequence, she found that the mark applied for could not serve as an indicator of origin for the goods and services in respect of which registration was sought, because all of them fell within the field of cell technology.

9. In May 2003, the Board of Appeal dismissed the applicant’s appeal. It was of the opinion that the word CELLTECH would ‘immediately and unambiguously be perceived by the relevant consumer as designating activities in the field of cell technology and products, apparatus and equipment used in connection with or resulting from such activities’. The connection between the goods and the mark was consequently not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1)(b) of the Regulation. The Board of Appeal added that, as the mark was barred from registration by Article 7(1)(b), it was not necessary to consider whether Article 7(1)(c) was applicable as well.

10. The trade-mark applicant appealed against that decision (‘the contested decision’) to the Court of First Instance. It raised ‘a single plea in law alleging infringement of Article 7(1)(b)’. (5)

The judgment of the Court of First Instance

11. The Court of First Instance allowed the appeal.

12. Since the relevant passages of the judgment are set out in full in the appropriate sections below, I will merely give an outline at this point.

13. First, the Court of First Instance summarised the case-law of the Court of Justice and the Court of First Instance concerning the essential function of a trade mark and the correct interpretation of the various grounds for refusal to register listed in Article 7(1) of the Regulation. (6) It noted in particular that a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b). (7)

14. The Court of First Instance then summarised paragraphs 10 to 12 of the contested decision, concluding that the Board of Appeal had ‘found, in essence, that the sign CELLTECH was not distinctive within the meaning of Article 7(1)(b) of Regulation No 40/94 on the ground that it would be perceived by the relevant public as descriptive of the type of goods and services concerned’. (8) It was therefore of the view that it was appropriate to consider whether the Board of Appeal had established that the mark was descriptive of the goods and services claimed. If so, the contested decision would have to be upheld on account of the case-law (9) holding that any descriptive sign is necessarily devoid of distinctiveness. If not, it would be necessary, following the SAT.1 judgment, (10) to ascertain whether the Board of Appeal had put forward other arguments in order to conclude that the sign was devoid of distinctiveness. (11)

15. The Court of First Instance thus turned to the question whether the Board of Appeal had established that the mark was descriptive. It confirmed the Board of Appeal’s finding (12) that the target public consisted not only of specialist consumers from the medical field, who are knowledgeable about English-language scientific terms in their sphere of activity regardless of their mother tongue, but also of average consumers. (13) After reviewing the contested decision, the Court of First Instance concluded that the Board of Appeal had not established that the mark was descriptive of the goods and services in question. (14)

16. Next, the Court of First Instance considered whether the Board of Appeal had put forward other arguments showing that the mark was devoid of any distinctive character. It concluded that the Board of Appeal had failed to establish that the mark, taken as a whole, would not allow the target public to distinguish the applicant’s goods and services from those having a different commercial origin. (15)

17. The Court of First Instance accordingly concluded that the Board of Appeal had not established that the mark was prevented from registration on the basis that it was descriptive and hence precluded by Article 7(1)(c) of the Regulation. Since the Board of Appeal had not set out any other grounds for a finding that the mark was none the less devoid of any distinctive character for the purposes of Article 7(1)(b), it had been wrong in holding that the mark was precluded from registration by Article 7(1)(b). The Court of First Instance therefore annulled the contested decision. (16)

18. OHIM has appealed against the judgment of the Court of First Instance on five grounds, claiming that that judgment ‘violated Article 7(1)(b) and (c) … and is vitiated by the failure to give proper reasons’.

Admissibility of the appeal

19. The trade-mark applicant argues that the appeal is inadmissible in so far as it concerns Article 7(1)(c) of the Regulation. It submits that the Board of Appeal made no finding on that provision, but rejected the CELLTECH mark on the basis of Article 7(1)(b) of the Regulation alone. Moreover OHIM did not argue before the Court of First Instance that the mark was unregistrable on the ground of Article 7(1)(c); on the contrary, it stated that CELLTECH ‘is therefore not distinctive in relation to the goods and services and is not eligible for registration under Article 7(1)(b)’. (17) In contrast, almost all of OHIM’s appeal to the Court of Justice focuses on Article 7(1)(c).

20. At the hearing, counsel for the applicant elaborated on that argument. He referred to the Court’s case-law establishing that each of the grounds for refusal to register listed in Article 7(1) is independent of the others and calls for separate examination, (18) that there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b) to (d) of Article 7, (19) and that a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b). (20) The need to distinguish firmly between 7(1)(b) and 7(1)(c) was most clearly dealt with in BioID, (21) in which the Court of Justice quashed the judgment of the Court of First Instance because the latter had not fully paid attention to the distinction between those provisions.

21. Counsel for the applicant stressed that the decision of the Court of First Instance in the present case was on 14 April 2005 and that the Court of Justice had decided BioID on 15 September 2005. He asserted that ‘there is no doubt that, if the present appeal was before the [Court of First Instance] today, [that court] would have focused on Article 7(1)(b) and would not...