The EU General Court
In this recent judgment, the EU General Court (“GC”) upheld the decision of the OHIM Board of Appeal to reject an application by Exalation Ltd (“Exalation”) to register the word mark VEKTOR-LYCOPIN.
Exalation filed an application for registration of the word mark VEKTOR-LYCOPIN as a Community trade mark. The application was filed for goods in classes 5, 29 and 30, including pharmaceutical preparations, dietetic substances and food and drink products.
However, the examiner rejected the application on the grounds that the mark was descriptive and lacked distinctive character for the German- and English-speaking public of the European Community and could not therefore be registered (Article 7(1)(b) and (c) and Article 7(2) of the Council Regulation (EC) No 40/94 (the “Regulation”)).
Exalation appealed against the examiner’s decision. However, the Fourth Board of Appeal of OHIM dismissed the appeal and upheld the examiner’s decision. It endorsed the findings of the examiner that the German term ‘Vektor’ (vector) is used in genetic engineering to apply to molecules of DNA used to introduce foreign DNA into a host cell, and secondly, the term ‘vektor’ in medicine and in the field of pest and disease control refers to organisms which transmit diseases. The Board of Appeal also endorsed the examiner’s observations that the German term ‘Lycopin’ (lycopene) means a carotenoid with antioxidant properties (commonly found in tomatoes, carrots and other red fruits & vegetables).
The Board of Appeal found that the sign applied for, taken overall, had a specific descriptive meaning in respect of the goods referred to in the application for registration. It is, in fact, a food supplement the active ingredient of which is found in the composition of pharmaceutical preparations or dietetic preparations for medical use, in baby food and in any of the food products falling within Classes 29 and 30.
Further, the Board of Appeal held that in order to ascertain the relevant public, it is necessary to include not only consumers but also producers of, and traders in, the goods covered by the application for registration.
Exalation appealed to the GC.
Exalation’s Grounds of Appeal
Exalation argued that the Board of Appeal had infringed Article 7(1)(b) and (c) of the Regulation, as the mark applied for had sufficient distinctive character and was not descriptive.
The GC’s Findings
‘Lycopin’ as a descriptive term
The GC held that the Board of Appeal did not err in finding that the term ‘lycopin’ was descriptive of the goods. The relevant public had to be regarded as being aware of the term, or capable of becoming aware of the term, on account of the following: (i) it is a technical term designating a food supplement of which professionals dealing with dietetic and pharmaceutical preparations would be aware; (ii) the meaning of the term ‘lycopin’ is easily accessible to consumers of all the goods as it appears in dictionaries and on websites; and (iii) the less well-informed section of the relevant public will become aware of the term by means of the advice received from those who prescribe it or through information from various media.
Polysemy of the term ‘vektor’
The GC found that it was irrelevant that the term ‘vektor’ may have different meanings in certain specialist fields. Although Exalation asserted that the term had different meanings in the fields of mathematics and physics to those in genetic engineering and biology, the GC (citing Case OHIM v Wrigley, DOUBLEMINT  ECR I-12447) stated that a word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned.
When construed with the meaning adopted by the Board of Appeal, ‘vektor’ would evoke, in the mind of the relevant public, a property of the goods covered by the application consisting of the capacity to transmit a substance or active ingredient which may be included in the composition of those goods.
Impression of the sign taken as a whole
Despite the term ‘vektor’ and the term ‘lycopin’ being found to be descriptive, Exalation argued that the combination of the terms in the sign VEKTOR-LYCOPIN was unusual and unknown as it did not appear in any dictionaries. It argued that the sign therefore created an impression sufficiently far from that produced by the meaning of its constituent terms.
The GC held that the Board of Appeal was correct in finding that the mark consisted exclusively of terms which may serve, in trade, to designate characteristics of the relevant goods and that it was, therefore, not capable of being registered. The GC noted that the juxtaposition of two descriptive words may not be descriptive if, because of the unusual nature of the combination, the sign creates an impression which is sufficiently far removed from the meanings of its constituent terms. However, in this case, the combination of the two terms would constitute in the mind of the relevant public an indication that the goods at issue contain lycopene and allow consumers of them to assimilate that substance. The Court based its finding on the following considerations: (i) ‘vektor’ and ‘lycopin’ were merely linked by a hyphen, which is commonly used in the German and English languages to combine words; and (ii) for the purpose of assessing the descriptive nature of a sign it is irrelevant whether or not there is evidence of it in dictionaries (Case T-405/04 Borco-Marken-Import Matthiesen v OHIM).
The previous registration of marks which include the descriptive terms ‘vektor’ or ‘vector’
Exalation attempted to rely on the registration of a number of Community, national and international trade marks including the term ‘vektor’, and on the registration of the sign VECTOR-LYCOPIN as a Community trade mark, to support its case.
The GC stated that the fact that identical or comparable marks have been registered may, at most, be taken into account but could not be regarded as binding (Case T-24/00 Sunrider v OHIM, VITALITE; Case T-16/02 Audi v OHIM, TDI).
Infringement of Article 7(1)(b) of the Regulation
As just one of the absolute grounds for refusal listed in Article 7(1) suffices for the sign at issue not to be registered as a Community trade mark, the GC did not go on to rule on Exalation’s plea alleging infringement of Article 7(1)(b).
This case demonstrates that even where the meaning of a descriptive term would not be known to a significant proportion of the relevant public, the likelihood and ease with which such consumers may become aware of its meaning will be taken into account in assessing whether a mark containing that term is descriptive. The case also serves as a useful reminder that a mark shown to be descriptive in at least one of its meanings will not be registered, even where the same term has other meanings in other fields.
Hilary Atherton, Bird & Bird LLP, firstname.lastname@example.org