TwoBirds wins ECJ approval for Celltech over EU’s trademark office

Bird & Bird

has won a crucial trademark battle in the European Court of Justice (ECJ) for biotech client Celltech, ending a seven-year battle for the company.

The ECJ ruled for Celltech against the Office for Harmonisation in the Internal Market (OHIM), the centralised trademark office in the EU.

Seven years ago Celltech applied to register its name as a trademark for a variety of pharmaceutical substances, surgical and dental equipment and R&D services.

The OHIM had argued that because Celltech’s name was made up of two descriptive words, namely ‘cell’ and ‘tech’, the combination was descriptive of Celltech’s activities and not valid as a trademark.

The ECJ disagreed. In its ruling it said: “It is not sufficient that each of [the trademark’s] components may be found to be descriptive. The word itself must be found to be descriptive.”

The case is one of a dwindling number of trademark appeals heard at the ECJ.

Neil Jenkins, the lead Bird & Bird partner on the case, said: “It’s a further indication of the ECJ getting fed-up with the number of these appeals. The court’s saying if it’s a question of fact then it’s not for us to interfere.

“It does represent a further tightening up, to the extent that the court’s willing to wade into the factual side of cases.

“I think if you look at a number of decisions, the ECJ’s making it more difficult for parties to appeal from the Court of First Instance.”