Case C-273/05 P

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

v

Celltech R&D Ltd

(Appeal – Community trade mark – Article 7(1)(b) and (c) of Regulation (EC) No 40/94 – Application for word mark CELLTECH – Absolute grounds for refusal – Lack of distinctive character – Descriptive character)

Opinion of Advocate General Sharpston delivered on 14 December 2006 

Judgment of the Court (First Chamber), 19 April 2007 

Summary of the Judgment

1.     Appeals – Pleas in law – Plea submitted for the first time at the appeal stage – Inadmissible – Plea seeking solely to challenge the findings of law made by the Court of First Instance in the judgment under appeal – Admissibility

2.     Community trade mark – Procedural provisions – Examination of the facts of its own motion – Scope

(Art. 225 EC; Statute of the Court of Justice, Art. 58; Council Regulation No 40/94, Art. 74)

3.     Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks which consist exclusively of signs or indications to designate a product’s characteristics

(Council Regulation No 40/94, Art. 7(1)(c))

1.     To allow a party to put forward for the first time before the Court of Justice a plea in law which it has not raised before the Court of First Instance would be to allow it to bring before the Court, whose jurisdiction in appeals is limited, a case of wider ambit than that which came before the Court of First Instance. In an appeal the Court’s jurisdiction is therefore confined to review of the findings of law on the pleas argued before the Court of First Instance.

However, since, first, a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) refused the registration of a mark applied for on the sole basis of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark and, second, the appeal against that decision before the Court of First Instance was based on breach of that provision, it is only at the appeal stage that the interpretation of Article 7(1)(c) could be challenged in the judgment which led that Court to annul the contested decision. In those circumstances, and to the extent that it seeks solely to challenge the findings of law made by the Court of First Instance in the judgment under appeal, an appeal alleging infringement of Article 7(1)(c) of Regulation No 40/94 must be declared admissible.

(see paras 21-24)

2.     Under Article 74(1) of Regulation No 40/94 on the Community trade mark, the examiners of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and, on appeal, the Boards of Appeal of the Office are required to examine the facts of their own motion in order to determine whether the mark applied for falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of the Office may be led to base their decisions on facts which have not been alleged by the applicant for the mark. Whilst it is in principle the task of those bodies to establish in their decisions the accuracy of such facts, such is not the case where they allege facts which are well known. The finding by the Court of First Instance as to whether or not facts are well known constitutes a finding of fact which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal.

(see paras 38-39, 45)

3.     In order for a mark consisting of a word produced by a combination of elements to be regarded as descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94 on the Community trade mark, it is not sufficient that each of its components may be found to be descriptive. The word itself must be found to be descriptive. As a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics for the purposes of Article 7(1)(c).

However, such a combination may not be descriptive, within the meaning of that provision, provided that it creates an impression which is sufficiently far removed from that produced by the simple combination of those elements. Accordingly, whilst, as regards a trade mark comprising words, its distinctive character may be assessed, in part, in relation to each of its elements, taken separately, it must, in any event, depend on an appraisal of the whole which they comprise. In that regard, the assertion cannot be made that the prior analysis of each of the elements of which a mark is composed is an essential step. On the contrary, the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and, where an action is brought, the Court of First Instance are required to assess the descriptiveness of the mark, considered as a whole.

(see paras 76-80)

JUDGMENT OF THE COURT (First Chamber)

19 April 2007 (*)

(Appeal – Community trade mark – Article 7(1)(b) and (c) of Regulation (EC) No 40/94 – Application for word mark CELLTECH – Absolute grounds for refusal – Lack of distinctive character – Descriptive character)

In Case C-273/05 P,

APPEAL under Article 56 of the Statute of the Court of Justice, brought on 30 June 2005,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

appellant,

the other party to the proceedings being:

Celltech R&D Ltd, established in Slough (United Kingdom), represented by D. Alexander QC and G. Hobbs QC, instructed by N. Jenkins, Solicitor,

applicant at first instance,

THE COURT (First Chamber),

composed of P. Jann, President of the Chamber, K. Lenaerts, E. Juhász, K. Schiemann and M. Ilešič (Rapporteur), Judges,

Advocate General: E. Sharpston,

Registrar: L. Hewlett, Principal Administrator,

having regard to the written procedure and further to the hearing on 17 May 2006,

after hearing the Opinion of the Advocate General at the sitting on 14 December 2006,

gives the following

Judgment

1       By its appeal, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) seeks to have set aside the judgment of the Court of First Instance of the European Communities of 14 April 2005 in Case T-260/03 Celltech v OHIM (CELLTECH) [2005] ECR II‑1215 (‘the judgment under appeal’), by which the Court of First Instance upheld the application of Celltech R&D Ltd (‘Celltech’) and annulled the decision of 19 May 2003 of OHIM’s Second Board of Appeal (Case R 659/2002-2) refusing registration of the word mark CELLTECH (‘the contested decision’).

 Legal context

2       Article 7(1)(b) and (c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) provides:

‘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.’

3       Article 73 of that regulation provides:

‘Decisions of [OHIM] shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.’

4       Article 74(1) of that regulation provides ‘[i]n proceedings before it [OHIM] shall examine the facts of its own motion’.

 Background to the dispute

5       On 30 June 2000, Celltech filed an application with OHIM, pursuant to Regulation No 40/94, for registration of the word mark CELLTECH as a Community trade mark.

6       The goods and services for which registration was sought are ‘pharmaceutical, veterinary and sanitary preparations, compounds and substances’, ‘surgical, medical, dental and veterinary apparatus and instruments’, and ‘research and development services; consultancy services; all relating to the biological, medical and chemical sciences’, in Classes 5, 10 and 42 respectively 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.

7       By decision of 4 June 2002, OHIM’s examiner rejected the application for registration, basing the rejection on Article 7(1)(b) and (c) of Regulation No 40/94. He held that the mark at issue consisted of the grammatically correct combination of the two terms ‘cell’ and ‘tech’ (an abbreviation of ‘technical’ or ‘technology’) and that, consequently, it 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.

8       By the contested decision, OHIM’s Second Board of Appeal dismissed Celltech’s appeal against the examiner’s decision. In essence, the Board of Appeal held that, since the mark applied for was such as to be immediately and unambiguously perceived as a term designating activities in the field of cell technology and products, apparatus and equipment used in connection with, or resulting from, those activities, the connection between the goods and services to which the application for registration related and the trade mark was not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1)(b) of Regulation No 40/94.

 Procedure before the Court of First Instance and the judgment under appeal

9       Celltech brought an action before the Court of First Instance for annulment of the contested decision.

10     After noting, in paragraphs 25 and 26 of the judgment under appeal, that the Board of Appeal had found that the trade mark applied for was devoid of distinctive character 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 referred to in the application for registration, the Court of First Instance considered, in paragraph 27 of the judgment under appeal, that it must establish, in the first place, whether the Board of Appeal had shown that that mark was descriptive of those goods and services, within the meaning of Article 7(1)(c) of that regulation.

11     In paragraphs 29 to 31 of the judgment under appeal, the Court of First Instance held that the public targeted consisted not only of all specialist consumers from the medical field who are knowledgeable about scientific terms in their sphere of activity, regardless of their mother tongue, but also of average English-speaking consumers.

12     In paragraphs 32 and 33 of the judgment under appeal, the Court of First Instance held that at least one meaning of the mark CELLTECH is ‘cell technology’.

13     After noting, in paragraph 34 of the judgment under appeal, that the Board of Appeal had held that the term ‘celltech’ ‘designated activities in the field of cell technology and products, apparatus and equipment used in connection with, or resulting from, such activities’, the Court of First Instance examined, in paragraphs 35 to 41 of that judgment, whether the Board of Appeal had shown that the mark applied for was descriptive of the goods and services referred to in the application for registration. The Court concluded that it had not, for the following reasons:

‘36      In that regard, it must be noted that neither the Board of Appeal nor OHIM has given an explanation of the meaning in scientific terms of cell technology. OHIM merely produced as an annex to its response an extract from the Collins English Dictionary showing the definitions of the terms “cell” and “tech”.

37      Neither the Board of Appeal nor OHIM explained in what way those terms give any information about the intended purpose and nature of the goods and services referred to in the application for registration, in particular about the way in which those goods and services would be applied to cell technology or how they would result from it.

38      Admittedly, it is the case that the goods and services to which the application for registration relates are in general terms pharmaceutical goods and services and, on that account, have a connection with bodies which are composed of cells. However, the Board of Appeal did not show that the relevant public would immediately and without further reflection make a definite and direct association between the pharmaceutical goods and services claimed and the meaning of the word mark CELLTECH (see, to that effect, Case T-359/99 DKV v OHIM (EuroHealth) [2001] ECR II-1645, paragraph 35).

39      Furthermore, even supposing that the goods and services concerned may be used for functional purposes involving cell technology, that fact would not be sufficient for a finding that the word mark CELLTECH may serve to designate their intended purpose. Such use of them constitutes at most one of many possible areas of use, but not their technical function ([Case T‑356/00 DaimlerChrysler v OHIM (CARCARD) [2002] ECR II‑1963,] paragraph 40).

40      It follows from the foregoing considerations that the Board of Appeal did not establish that the term “celltech”, even taken as meaning cell technology, is such as to be immediately and unambiguously perceived as designating activities in the field of cell technology and products, apparatus and equipment used in connection with or resulting from such activities. Nor did it establish that the public targeted will view it purely as an indication of the type of goods and services designated by the sign.

41      Consequently, the Court must hold that the Board of Appeal did not demonstrate that the word mark CELLTECH was descriptive of the goods and services in respect of which registration was sought.’

14     In paragraphs 42 to 44 of the judgment under appeal, the Court of First Instance examined, in the second place, whether the Board of Appeal had put forward other arguments showing that the word mark at issue was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 and held that it had not.

15     Therefore, the Court of First Instance annulled the contested decision and ordered OHIM to pay the costs.

 The appeal

16     In its appeal, in support of which it relies on five grounds, OHIM claims that the Court should:

–       set aside the judgment under appeal;

–       primarily, dismiss Celltech’s action at first instance and order it to pay the costs both of the proceedings before the Court of First Instance and of those before the Court of Justice;

–       in the alternative, refer the case back to the Court of First Instance.

17     Celltech contends that the Court should dismiss the appeal and order OHIM to pay the costs.

18     At the outset, it is appropriate to note that neither OHIM nor Celltech challenges the Court of First Instance’s analysis, in paragraphs 25 to 27 of the judgment under appeal, that, although the Board of Appeal decided that the mark CELLTECH is not distinctive within the meaning of Article 7(1)(b) of Regulation No 40/94, it did so on the ground that the mark would be perceived by the relevant public as descriptive, within the meaning of Article 7(1)(c), of the goods and services referred to in the application for registration.

 The admissibility of the appeal

19     Celltech submits that the Board of Appeal refused to register the mark applied for solely on the basis of Article 7(1)(b) of Regulation No 40/94, and that before the Court of First Instance the objections raised by OHIM against registration of that mark were also based on that provision. By contrast, OHIM now bases its appeal almost exclusively on Article 7(1)(c) of that regulation.

20     In Celltech’s submission, since a party is not entitled to put forward a plea in law for the first time before the Court of Justice, OHIM’s appeal must be declared inadmissible.

21     In that regard, it is settled case-law that to allow a party to put forward for the first time before the Court of Justice a plea in law which it has not raised before the Court of First Instance would be to allow it to bring before the Court, whose jurisdiction in appeals is limited, a case of wider ambit than that which came before the Court of First Instance. In an appeal the Court’s jurisdiction is therefore confined to review of the findings of law on the pleas argued before the Court of First Instance (see, in particular, Joined Cases C-186/02 P and C-188/02 P Ramondín and Others v Commission [2004] ECR I-10653, paragraph 60, and Case C‑25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 61).

22     It must be stated, however, that in this case OHIM’s appeal seeks solely to challenge the findings of law made by the Court of First Instance in the judgment under appeal.

23     In effect, first, the Board of Appeal refused the registration of the mark applied for on the sole basis of Article 7(1)(b) of Regulation No 40/94 and, second, Celltech’s appeal against the contested decision was based on breach of that provision. In those circumstances, it is only at the appeal stage that OHIM was in a position to challenge the Court of First Instance’s interpretation of Article 7(1)(c) of Regulation No 40/94 in the judgment under appeal which led that Court to annul the contested decision.

24     The appeal must therefore be declared admissible.

 The first ground of appeal

 Arguments of the parties

25     OHIM submits that the Court of First Instance wrongly required the Board of Appeal and itself to explain the meaning, in scientific terms, of the expression ‘cell technology’ in order to show ‘in what way those terms give any information about the intended purpose and nature of the goods and services referred to in the application for registration, in particular about the way in which those goods and services would be applied to cell technology or how they would result from it’.

26     First, the Court of First Instance made an error of law, in paragraph 36 of the judgment under appeal, by criticising the Board of Appeal for not having explained the meaning, in scientific terms, of ‘cell technology’, and by making such an explanation a condition in order to refuse the mark applied for as being descriptive.

27     OHIM submits that, although the Board of Appeal must state the reasons why it considers a word mark to be descriptive, it was not required, in this case, to provide a scientific definition of the expression ‘cell technology’.

28     It is clear upon reading the first sentence of Article 73 in conjunction with Article 74(1) of Regulation No 40/94 that, although the bodies of OHIM are required to give reasons for their decisions, they are not, however, required to state the facts that they have taken into consideration. Therefore, reasoning, even if it is in the abstract, suffices provided that it is correct and that it is not contradicted by a party’s evidence to the contrary. That interpretation is confirmed by the case-law of the Court of Justice (Case C‑447/02 P KWS Saat v OHIM [2004] ECR I-10107, paragraphs 44 to 49) and of the Court of First Instance (Case T‑315/03 Wilfer v OHIM (ROCKBASS) [2005] ECR II-1981, paragraph 21).

29     The Board of Appeal’s legal reasoning whereby, first, the mark applied for means ‘cell technology’ and, second, that meaning will 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’, was, in OHIM’s submission, sufficient to support the refusal of registration under Article 7(l)(c) of Regulation No 40/94.

30     Moreover, the expression ‘cell technology’, which denotes the practical application of scientific research on cells, is sufficiently self-explanatory to be understood by both the average consumers and the specialists who form the relevant public. Any additional explanation and, in particular, a scientific explanation, would have been superfluous.

31     Second, the Court of First Instance also made an error of law by criticising the Board of Appeal, in paragraph 37 of the judgment under appeal, for not explaining in what way the expression ‘cell technology’ gives any information about the intended purpose and nature of the goods and services referred to in the application for registration.

32     OHIM submits that, if the Court of First Instance meant that the Board of Appeal was bound to refer to a scientific definition of that expression, it made an error of law for the reasons set out in paragraphs 26 to 30 of the present judgment.

33     If, on the other hand, it meant that the Board of Appeal should have demonstrated how the goods marketed and services provided by Celltech were actually applied to cell technology or how they actually resulted from it, it also made an error of law. The way in which an applicant for a Community trade mark intends to market or is marketing the goods or services in question is immaterial as regards the assessment of whether or not the mark is descriptive or whether or not it is devoid of any distinctive character, as such an assessment must be made in the context of an a priori examination, without reference to any actual use.

34     Celltech acknowledges that OHIM is not required to produce evidence of the meaning of a term in all the cases before it. However, it is required to do so where an expression consisting of a number of words is at issue, particularly a technical expression, which is not normally or ordinarily used descriptively.

35     That is the case in these proceedings. Celltech contends that the expression ‘cell technology’ – which it points out is different from the mark applied for, CELLTECH – does not have an established scientific meaning. It is not a technical term. The absence of a definition of that expression in dictionaries shows that cell technology does not exist in the scientific domain. The expression is not defined or used anywhere. It was to this point that the Court of First Instance was alluding when it said that OHIM had provided no explanation in scientific terms of the expression ‘cell technology’.

36     Celltech disputes OHIM’s assertion that the meaning of that expression is clear, namely, the practical application of scientific research on cells. There is no evidence of any kind that any member of the relevant public would perceive the mark CELLTECH in that sense. Indeed, there is no reason to suppose that the average consumer would split up the mark applied for in order to regard it thus.

 Findings of the Court

37     In the first place, contrary to OHIM’s reading of the judgment under appeal, the Court of First Instance did not annul the contested decision for failure to state reasons, but on the ground that OHIM did not establish that the mark CELLTECH, understood as meaning ‘cell technology’, was descriptive of the goods and services referred to in the application for registration.

38     Under Article 74(1) of Regulation No 40/94, OHIM examiners and, on appeal, the Boards of Appeal of OHIM are required to examine the facts of their own motion in order to determine whether the mark applied for falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of OHIM may be led to base their decisions on facts which have not been alleged by the applicant for the mark (Storck v OHIM, paragraph 50).

39     Whilst it is in principle the task of those bodies to establish in their decisions the accuracy of such facts, such is not the case where they allege facts which are well known (Storck v OHIM, paragraph 51).

40     In this case, in paragraph 12 of the contested decision, the Board of Appeal stated that ‘the combination “CELLTECH” will 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’.

41     The Board of Appeal thus implicitly held, first, that cell technology is a well-known scientific fact and, second, that the activities forming part of that scientific method or applying it enable the production or manufacture of pharmaceutical, veterinary or sanitary preparations, compounds or substances, surgical, medical, dental or veterinary apparatus or instruments and/or that such activities require the use of such preparations, compounds or substances as well as such apparatus or instruments.

42     In so doing, the Board of Appeal based its decision on facts which it examined of its own motion.

43     The Court of First Instance noted, in paragraphs 36 to 38 of the judgment under appeal, that, by not furnishing any evidence that cell technology has the scientific meaning attributed to it in the contested decision, the Board of Appeal did not establish the correctness of the findings, summarised in paragraphs 40 and 41 of the present judgment, on the basis of which it held that the mark CELLTECH is descriptive. In fact, it must be observed that the Board of Appeal made no attempt to establish the soundness of those findings, for example by referring to scientific literature.

44     OHIM argues that the expression ‘cell technology’ is sufficiently self-explanatory and, therefore, that any additional explanation and, in particular, a scientific explanation, was superfluous.

45     However, in deciding that the existence and nature of cell technology is not a well-known fact and that it was therefore for the Board of Appeal to establish the correctness of its findings in that regard, the Court of First Instance made a finding of fact which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal (see, to that effect, Storck v OHIM, paragraph 53).

46     Accordingly, the Court of First Instance did not make an error of law by deciding that, by not establishing the scientific meaning of cell technology, the Board of Appeal did not show that the mark CELLTECH is descriptive of the goods and services referred to in the application for registration.

47     In the second place, there is nothing in the judgment under appeal to support OHIM’s alternative interpretation of paragraph 37 of that judgment, set out in paragraph 33 of the present judgment. Therefore, the Court of First Instance did not make the error of law of which OHIM complains in that regard.

48     The first ground of appeal must therefore be rejected.

 The third ground of appeal

 Arguments of the parties

49     OHIM submits that the Court of First Instance made an error of law by holding, in paragraph 39 of the judgment under appeal, that, as a matter of principle, an area of use of goods or services does not fall within the characteristics of the goods or services whose description, by a mark for which registration is sought in respect of those goods or services, is prohibited under Article 7(1)(c) of Regulation No 40/94.

50     That provision does not lay down any distinction between, on the one hand, ‘intended purpose’ or ‘technical function’, which are characteristics of the goods and services, and, on the other, ‘area of use’, which is not. On the contrary, the reference in that provision to ‘other characteristics’ shows that all possible characteristics of the goods and services concerned fall within the prohibition which it lays down. That analysis is confirmed by the Court’s case-law, according to which it is immaterial whether or not the characteristics described are essential or ancillary (Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraphs 101 and 102).

51     The Court of First Instance should therefore have examined whether the mark CELLTECH is such as to be immediately and unambiguously perceived by the relevant consumer as designating activities in the field of cell technology and/or products used in connection with such activities.

52     Celltech replies that the Court of First Instance did not hold that an area of use cannot fall within the characteristics of goods or services whose description by a mark is prohibited under Article (7)(1)(c) of Regulation No 40/94. In paragraphs 39 and 40 of the judgment under appeal, the Court of First Instance merely held that the Board of Appeal had not established that the term ‘celltech’ is such as to be immediately and unambiguously perceived as designating the characteristics of the goods or services in respect of which registration is sought.

 Findings of the Court

53     In paragraphs 36 to 38 of the judgment under appeal, the Court of First Instance criticises the Board of Appeal for having failed to establish the existence and nature of cell technology.

54     In those circumstances, that Court was not, a fortiori, in a position to determine whether the goods and services referred to in the application for registration can be used for functional purposes involving cell technology.

55     It was therefore by way of hypothesis that, in paragraph 39 of the judgment under appeal, the Court of First Instance assumed that such could be the case, as is shown by the use of the words ‘even supposing’ in the first sentence of that paragraph.

56     Accordingly, the third ground of appeal appears to be directed against a ground of the judgment under appeal that was stated purely for the sake of completeness and, therefore, even on the assumption that it is well founded, it cannot lead to that judgment’s being set aside.

57     Consequently, this ground of appeal must be rejected as ineffective.

 The fourth ground of appeal

 Arguments of the parties

58     OHIM submits that the Court of First Instance failed to give reasons for its assertion, in paragraph 40 of the judgment under appeal, that the mark applied for is not such as to be immediately and unambiguously perceived as designating activities in the field of cell technology and products, apparatus and equipment connected with such activities. The judgment under appeal does not explain why the terms ‘celltech’ or ‘cell technology’ do not describe the characteristic consisting of the scientific method for obtaining the goods and services in question.

59     Celltech replies, first, that it is for OHIM to establish that the average consumer would regard the term ‘celltech’ (or even the expression ‘cell technology’) as describing such a characteristic. Secondly, the Court of First Instance gave proper reasons for its finding in paragraphs 35 to 41 of the judgment under appeal.

 Findings of the Court

60     As is clear from the examination of the first ground of appeal, the Court of First Instance provided to the requisite legal standard, in paragraphs 35 to 38 of the judgment under appeal, the reasons for its finding, formulated in paragraph 40 of that judgment, that the Board of Appeal did not show that the mark applied for is descriptive of the goods and services in question.

61     The fourth ground of appeal must therefore be rejected.

 The fifth ground of appeal

 Arguments of the parties

62     According to OHIM, the Court of First Instance made an error of law in denying that the designation of a scientific method for obtaining goods and services is descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94.

63     The term ‘celltech’, taken as meaning ‘cell technology’, is perceived as relating to goods and services whose characteristics derive from improvements in the biosciences using or modifying cells, that is to say, in the ‘cell technology’ research sector. Therefore, the scientific method for the production of the goods or the supply of the services is perceived as being, from the relevant consumer’s viewpoint, an important, concrete and direct characteristic.

64     Celltech contends that the Court of First Instance was right to reject the proposition that ‘cell technology’ describes the scientific process for the production of the goods or the supply of the services in question. OHIM has been unable to find any reference to that expression in the scientific literature or otherwise, because it is not used by any scientist to describe anything at all. Therefore, it is not capable of conveying the slightest information about the products in question.

 Findings of the Court

65     Contrary to OHIM’s submission, the Court of First Instance did not hold that a word or an expression designating a scientific method which enables the manufacture of pharmaceutical, veterinary or hygienic preparations, compounds or substances or the supply of services relating to the biological, medical and chemical sciences is not descriptive of the goods and services obtained by that method.

66     As was observed in the course of the examination of the first ground of appeal, the Court of First Instance annulled the contested decision on the ground that the Board of Appeal had not established, in particular, that cell technology is a method of production of the goods or of supply of the services referred to in the application for registration.

67     The fifth ground of appeal must therefore be rejected.

 The second ground of appeal

 Arguments of the parties

68     OHIM submits that it is clear from paragraph 98 of the judgment in Koninklijke KPN Nederland that a word mark made up of a mere combination of elements, each of which is descriptive of the characteristics of the goods or services in respect of which registration is sought, is itself presumed to be descriptive of those characteristics for the purposes of Article 7(1)(c) of Regulation No 40/94, and that such presumption can be rebutted only where that combination introduces an unusual variation, in particular as to syntax or meaning.

69     The Court of First Instance should therefore have ascertained whether the terms ‘cell’ and ‘tech’, taken individually, were in themselves descriptive of the goods and services concerned and, if it had concluded that they were, it should have explained how the combination of those two descriptive words introduced an unusual variation as regards the syntax or meaning of the term ‘celltech’ which enabled the latter term not to be itself descriptive of those goods and services. Therefore, it infringed Article 7(1)(c) of Regulation No 40/94 by failing to carry out such an examination.

70     OHIM adds that the Court of First Instance’s analysis cannot be vindicated on the basis of the judgment of the Court of Justice in Case C‑329/02 P SAT.1 v OHIM [2004] ECR I-8317, referred to in paragraph 43 of the judgment under appeal. That judgment concerned the distinctive character of a mark constituted by the juxtaposition of a descriptive element and a non-distinctive element and not, as in this case, the descriptive character of a mark constituted by a combination of two elements each of which may be descriptive. Furthermore, that judgment concerns the interpretation of Article 7(1)(b) of Regulation No 40/94 and not of Article 7(1)(c).

71     Celltech disputes the assertion that the Court of Justice established a presumption of lack of distinctiveness for marks composed of a combination of two non-distinctive elements. In Koninklijke KPN Nederland, the Court of Justice merely stated that ‘as a general rule’ a mere combination of elements each of which is descriptive of characteristics of goods remains descriptive of those characteristics. However, it is clear from the Court’s settled case-law, and notably from SAT.1 v OHIM, that the mark must be considered as a whole, since the average consumer does not split it up into its various component parts.

72     The Court of First Instance was therefore correct to consider the mark CELLTECH as a whole.

 Findings of the Court

73     Article 7(1)(c) of Regulation No 40/94 provides that 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, are not to be registered.

74      It is appropriate to interpret the grounds for refusal of registration listed in Article 7(1) of Regulation No 40/94 in the light of the general interest underlying each of them (C‑37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 59 and the case-law there cited).

75     Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, which requires that signs or indications which may serve, in trade, to designate characteristics of the goods or services for which registration is sought, may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I‑551, paragraph 62 and the case-law there cited).

76     In order for a mark consisting of a word produced by a combination of elements, such as the mark applied for, to be regarded as descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94, it is not sufficient that each of its components may be found to be descriptive. The word itself must be found to be descriptive (see, in respect of Article 3(1)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), a provision identical, in essence, to Article 7(1)(c) of Regulation No 40/94, Koninklijke KPN Nederland, paragraph 96, and Case C‑265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 37).

77     As OHIM pointed out, it follows from the Court’s case-law that, as a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics for the purposes of Article 7(1)(c) of Regulation 40/94 (Koninklijke KPN Nederland, paragraph 98, and Campina Melkunie, paragraph 39).

78     However, the Court added that such a combination may not be descriptive, within the meaning of that provision, provided that it creates an impression which is sufficiently far removed from that produced by the simple combination of those elements (Koninklijke KPN Nederland, paragraph 99, and Campina Melkunie, paragraph 40).

79     Accordingly, whilst, as regards a trade mark comprising words, its distinctive character may be assessed, in part, in relation to each of its elements, taken separately, it must, in any event, depend on an appraisal of the whole which they comprise (see, by analogy, concerning Article 7(1)(b) of Regulation No 40/94, SAT.1 v OHIM, paragraph 28, and BioID v OHIM, paragraph 29).

80     It follows from the foregoing considerations that, contrary to OHIM’s contention, it does not follow from the Court’s case-law that the prior analysis of each of the elements of which a mark is composed is an essential step. On the contrary, OHIM’s Boards of Appeal and, where an action is brought, the Court of First Instance are required to assess the descriptiveness of the mark, considered as a whole.

81     In this case, it must be held that the Court of First Instance properly assessed the descriptive character of the mark CELLTECH considered as a whole and concluded that it was not established that the mark, even understood as meaning ‘cell technology’, was descriptive of the goods and services referred to in the application for registration. Therefore, it did not infringe Article 7(1)(c) of Regulation No 40/94.

82     Accordingly, the second ground of appeal must be rejected and OHIM’s appeal must therefore be dismissed.

 Costs

83     Under Article 69(2) of the Rules of Procedure, applicable to the procedure on appeal by virtue of Article 118 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since Celltech has applied for costs and OHIM has been unsuccessful, the latter must be ordered to pay the costs.

On those grounds, the Court (First Chamber) hereby:

1.      Dismisses the appeal;

2.      Orders the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) to pay the costs.

[Signatures]

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* Language of the case: English.