Celltech had filed an application with the Office of Harmonization for the Internal Market (“OHIM”) for registration of the word mark “Celltech” (combination of two terms ‘cell’ and ‘technology’) as a Community Trade Mark for goods and services in classes 5,10 and 42: ‘pharmaceutical, veterinary and sanitary preparations, compounds and substances’, ‘surgical, medical, dental and veterinary apparatus and instruments’ and ‘R&D services, consultancy services’. The OHIM examiner rejected the application for registration based on Article 7(1)(b) & (c) of Regulation No 40/94 stating that the mark could not serve as an indicator of origin for the goods and services in respect of which registration was sought, because the terms “cell” and “tech” were descriptive within the field of cell technology. The first appeal by Celltech to the OHIM second Board of Appeal was rejected on the ground that the mark lacked inherent distinctiveness. However, Celltech succeeded in its second appeal to the Court of First Instance (“CFI”). The CFI accepted the contention of Celltech that both the examiner and the Second Board of Appeal failed to show how the mark was descriptive of those goods and services within the meaning of Article 7(1)(b), more particularly as to how the mark gives any information about the intended purpose and nature of the goods and services, and the way in which these goods and services would be applied to cell technology, or how they would result from it.
OHIM appealed to the European Court of Justice (“ECJ”) against the decision of the CFI on a number of grounds, primarily arguing that the CFI wrongly required it to demonstrate the lack of inherent distinctiveness in the mark. The ECJ rejected OHIM’s appeal holding that it is primarily the duty of OHIM to establish that the average consumer would take the term ‘celltech’ as definite and directly descriptive of goods and services. Moreover, there is no presumption that a term which is a combination of two descriptive terms will also lack distinctiveness for the purposes of Article 7(1)(c). Before being rejected as a trade mark, the global assessment of the sign as a whole must be taken into consideration.
The judgement is in line with the other ECJ judgments that require a global assessment of the marks before they can be accepted or rejected as trade marks. As in the present case, it is true that certain terms may describe an upcoming technology and that they should not be monopolised; but at the same time, just because a term can be descriptive of a technology should not in itself be sufficient for its rejection as a trade mark. It must be shown that the relevant public would make a definite and direct association between the goods and services, and the meaning of the mark before it can be rejected for being descriptive.
ECJ enjoys drinking "Champagnebier"
De Landtsheer Emmanuel SA (“De Landtsheer”) was producing beer with a sparkling wine method under the trade mark “Malheur”. In its marketing materials, De Landtsheer used the signs: BRUT, RÉSERVE, BRUT RÉSERVE, LA PREMIÈBIÈRE BRUT AU MONDE (the first BRUT beer in the world), BIÈRE BLONDE À LA MÉTHODE TRADITIONNELLE (traditionally-brewed light beer), and REIMS-FRANCE, as well as references to the wine-growers of Reims and Épernay. It also used the expression CHAMPAGNEBIER to demonstrate that its beer was made using the same methods as are used for making sparkling wine. Subsequently, Comité Interprofessionnel du Vin de Champagne (“CIVC”) and Veuve Clicquot Ponsardin SA (“Veue Clicquot”), both organisations representing French Champagne producers, brought an action against De Landtsheer before the Commercial Court of Nivelles, Belgium, to prohibit De Landtsheer from using the phrase CHAMPAGNEBIER and other phrases on its products on the grounds of misleading and illicit comparative advertising. The tribunal granted an injunction against some terms, but not against BRUT, RÉSERVE and BRUT RÉSERVE.
As a result, De Landtsheer ceased to use CHAMPAGNEBIER, but appealed against the judgment in relation to all other elements of the case. At the same time, CIVC and Veuve Clicquot also brought a cross-appeal against the use of the signs BRUT, RÉSERVE, BRUT RÉSERVE, and LA PREMIÈBIÈRE BRUT AU MONDE on the products. At this stage, the Court of Appeal in Brussels decided to stay proceedings and approached ECJ for an interpretation of Directive 84/450 concerning misleading and comparative advertising, on the questions regarding the definition of “comparative advertising” and “competitor”, and the validity of comparative advertising on products protected by a geographical indication.
The ECJ concluded that:
- Comparative advertising can include a reference to a type of product and not to a specific undertaking or product. It is also possible to identify the undertaking or the goods that it offers as being referred by the advertisement. It is not relevant whether the competitors or the goods or services that they offer may be identified by the advertisement;
- The competitive relationship between the advertiser and the undertaking identified in the advertisement cannot be established independently of the goods or services offered by the undertaking and can be determined by many factors such as the current state of the market, consumer habits, the place where the advertising is disseminated and the characteristics of the product;
- The Directive is applicable to advertising which refers to a type of product without identifying a competitor or the goods which it offers. But in such cases, whether the advertisement is permissible or not, depends on the other provisions of national law or, where appropriate, of Community law, irrespective of the fact that that could mean a lower level of protection for consumers or competing undertakings.
- Article 3a(1)(f) of the Directive must be interpreted as meaning that, for products without a designation of origin, any comparison which relates to products with a designation of origin cannot be prohibited.
It appears that the ECJ views comparative advertising as another means to market trade marked products competitively across the market. Therefore, although geographical identifications can protect a symbol of culture and origination in particular areas, it is inappropriate to rely on claims for misleading comparative advertising based on the use of geographical identifications as a means of restricting fair trade