CELEX: 62008TJ0085
Community trade mark
Application for Community word mark Vektor-Lycopin
Absolute grounds for refusal
Lack of distinctive character
Descriptive character
Article 7(1)(b) and (c) of Regulation (EC) No 40/94 (now Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)

Background to the case
On 6 January 2006, the applicant, Exalation Ltd, filed an application for registration of a Community trade mark at the Office
for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of
20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended by Regulation (EC) No 207/2009 of 26 February
2009 on the Community trade mark (OJ 2009 L 78, p. 1).
The mark for which registration was sought is the word sign Vektor-Lycopin.
The goods in respect of which registration was sought come within Classes 5, 29 and 30 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, and correspond in particular, for each of those classes, to the following description:
–        Class 5: ‘Pharmaceutical and veterinary preparations for medical purposes; sanitary preparations for medical purposes; dietetic
substances adapted for medical use, food for babies’;
–        Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams,
compotes; eggs, milk and milk products; edible oils and fats’;
–        Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread,
pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); ice’.
By decision of 4 May 2007 (‘the examiner’s decision’), the examiner rejected, under Article 38 of Regulation No 40/94 (now
Article 37 of Regulation No 207/2009), the trade mark application in respect of the goods listed in paragraph 3 above, on
the grounds that the mark Vektor-Lycopin was descriptive and lacked distinctive character for the German- and English-speaking
public of the European Community and that it could not be registered under Article 7(1)(b) and (c) and Article 7(2) of Regulation
No 40/94 (now Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009).
On 3 July 2007, the applicant filed a notice of appeal under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to
64 of Regulation No 207/2009) against the examiner’s decision.
By decision of 17 December 2007 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal and upheld
the examiner’s decision.
In the contested decision, the Board of Appeal held that the absolute grounds for refusal referred to in Article 7(1)(b) and
(c) of Regulation No 40/94 were applicable in the German- and English-speaking parts of the Community. Those provisions, in
conjunction with those of Article 7(2) of Regulation No 40/94, therefore precluded registration of the mark Vektor-Lycopin.
As regards application of the absolute ground for refusal referred to in Article 7(1)(c) of Regulation No 40/94, the Board
of Appeal endorsed the findings of the examiner that, first, the German term ‘Vektor’ (vector) is used in genetic engineering
to apply to molecules of deoxyribonucleic acid (DNA) used to introduce foreign DNA into a host cell and, secondly, the term
‘vector’ in medicine and in the field of pest and disease control refers to organisms which transmit diseases (paragraph 18
of the contested decision).
The Board of Appeal also endorsed the examiner’s observations that the German term ‘Lycopin’ (lycopene) means a carotenoid
with antioxidant properties (paragraph 18 of the contested decision).
The Board of Appeal also noted that the elements ‘vektor’ and ‘lycopin’ were linked by a hyphen, following the rules in the
German and English languages (paragraph 18 of the contested decision).
The Board of Appeal, lastly, endorsed the examiner’s findings 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 may be found in the composition of pharmaceutical preparations or dietetic preparations for medical use,
or in baby food or in any of the food products falling within Classes 29 and 30 listed in paragraph 3 above (paragraphs 19
to 21 of the contested decision).
Moreover, 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 (paragraph 22 of the contested decision).

Forms of order sought
In the application, the applicant claims that the Court should:
–        annul the contested decision;
–        annul the examiner’s decision;
–        order OHIM to register the mark Vektor-Lycopin;
–        order OHIM to pay the costs.
OHIM contends that the Court should:
–        dismiss the application;
–        order the defendant to pay the costs.
At the hearing, the applicant abandoned its second and third heads of claim, formal note of which was taken in the minutes
of the hearing.

Law
In support of its application for annulment of the contested decision, the applicant puts forward two pleas in law alleging,
first, infringement of Article 7(1)(c) of Regulation No 40/94 and, second, infringement of Article 7(1)(b) of Regulation No 40/94.
The Court will examine the first plea first.

The plea alleging infringement of Article 7(1)(c) of Regulation No 40/94
Arguments of the parties
First the applicant points out that the sign Vektor-Lycopin consists of two components, the combination of which is unusual
and unknown. There is no evidence of the sign Vektor-Lycopin either in dictionaries, or in the oral or written language. It
is not known or in current use in medicine, biology, physics or mathematics. The sign Vektor-Lycopin therefore constitutes
a neologism satisfying the criteria laid down in the case-law whereby the juxtaposition of two descriptive words is not descriptive
if, because of the unusual nature of the combination, the sign at issue creates an impression sufficiently far removed from
that produced by the meaning of the terms composing it, with the result that that sign, taken as a whole, is more than the
sum of its parts. Being entirely new, the sign Vektor-Lycopin is therefore unknown to the public specialising in medicine,
biology, pharmacy or physics and to the end consumer.
Secondly, the applicant contends that there is no single definition of the word element ‘vektor’. The Board of Appeal merely
took into account the meaning of that term in the field of genetic engineering. However, that term has a number of other meanings
in various fields, such as physics. The semantic restriction applied by the Board of Appeal is open to criticism since, without
due reason, it is unfavourable to the applicant. Moreover, the meaning of the German term ‘Vektor’ specific to the field of
genetic engineering is not known either to the specialist public consisting of biologists, physicists, doctors, pharmacists,
mathematicians or other specialists, nor a fortiori to the average end consumer of the goods described in the application
for registration. Thus, the target public cannot infer from the sign Vektor-Lycopin that it describes a mixture of extracts
of liquorice and tomato. In support of its claims, the applicant proposes to submit to the Court some results of opinion surveys.
Thirdly, the applicant maintains that, if the ‘vektor’ element was descriptive, as the Board of Appeal asserts, no mark including
that term should be registrable. However, there are many Community, national and international marks including the term ‘vektor’.
The position adopted by the Board of Appeal should therefore, according to the applicant, lead to cancellation, under Article
51(1)(a) of Regulation No 40/94 (now Article 52(1)(a) of Regulation No 207/2009), of all Community trade marks including the
term ‘vektor’.
Lastly, the applicant maintains that the arguments it put forward, both in support of its trade mark application and during
the proceedings before the Board of Appeal, are maintained in full and also form an integral part of this action.
OHIM disputes all the appellant’s arguments.
Findings of the Court
Under Article 7(1)(c) of Regulation No 40/94, 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. Moreover,
Article 7(2) of that regulation states that paragraph 1 is to apply notwithstanding that the grounds of non-registrability
obtain in only part of the Community.
Signs or indications which may serve in trade to designate the characteristics of the goods or service in respect of which
registration is sought are, by virtue of Regulation No 40/94, deemed incapable, by their very nature, of fulfilling the indication-of-origin
function of the trade mark, without prejudice to the possibility of their acquiring distinctive character through use under
Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation No 207/2009) (Case C‑191/01 P
OHIM
v
Wrigley
[2003] ECR I‑12447, paragraph 30).
According to settled case-law, Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely
that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration
is sought may be freely used by all (
OHIM
v
Wrigley
, paragraph 23 above, paragraph 31, and Case T‑316/03
Münchener Rückversicherungs-Gesellschaft
v
OHIM
(MunichFinancialServices)
[2005] ECR II‑1951, paragraph 25).
In order for refusal to register a trade mark under Article 7(1)(c) of Regulation No 40/94 to be justified, it is not necessary
that the signs and indications composing the mark at issue actually be in use at the time of the application for registration
in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics
of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications
could be used for such purposes. A word sign must therefore be refused registration if at least one of its possible meanings
designates a characteristic of the goods or services concerned (
OHIM
v
Wrigley
, paragraph 23 above, paragraph 32).
Consequently, OHIM must, under Article 7(1)(c) of Regulation No 40/94, determine whether a trade mark for which registration
is sought represents, in the mind of the relevant class of persons, a description of the characteristics of the goods or services
concerned or whether it is reasonable to assume that that might be the case in the future. If, at the end of that assessment,
the Board of Appeal reaches the conclusion that that is the case, it must refuse, on the basis of that provision, to register
the mark (see, by analogy, Case C‑363/99
Koninklijke KPN Nederland
[2004] ECR I‑1619, paragraph 56).
–       Concerning the applicant’s offer to provide evidence
In support of its arguments contesting that the relevant public is aware of the meaning adopted by the Board of Appeal of
the German term ‘Vektor’, on the one hand, and of the term ‘Vektor-Lycopin’ on the other, the applicant proposes to submit
to the Court several public opinion surveys.
It should be noted that the legality of a measure of the European Union falls to be assessed on the basis of the elements
of fact and of law existing at the time when the measure was adopted. The legality of a decision of the Board of Appeal cannot
therefore be called into question by pleading new facts before the Court unless it is proved that the Board of Appeal should
have taken those facts into account of its own motion during the administrative procedure before adopting any decision in
the matter. According to Article 74(2) of Regulation No 40/94, OHIM may disregard facts or evidence which are not submitted
in due time by the parties concerned. Accordingly, in an action for annulment the Court may not take into consideration factors
of which OHIM was unable to be aware during the administrative procedure (see, to that effect, Case T‑222/02
HERON Robotunits
v
OHIM (ROBOTUNITS)
[2003] ECR II‑4995, paragraphs 50 and 51 and case-law cited).
In this case, it must be noted that the opinion surveys the applicant proposes to adduce to the Court were not submitted either
to the examiner or to the Board of Appeal during the administrative procedure. The applicant, moreover, does not contend that
those surveys were available on the date on which the contested decision was adopted. Even if the results of those surveys
had been available on that date they do not constitute facts which are well known, that is, which are capable of being taken
into account by OHIM of its own motion and which are likely to be known by anyone or, at least, may be learnt from generally
accessible sources (Case T‑185/02
Ruiz-Picasso and Others
v
OHIM
–
DaimlerChrysler (PICARO)
[2004] ECR II‑1739, paragraph 29, and Case T‑318/03
Atomic Austria
v
OHIM – Fabricas Agrupadas de Muñecas de Onil (ATOMIC BLITZ)
[2005] ECR II‑1319, paragraph 35). It follows that, whatever the probative value of that evidence, the applicant cannot attempt
to dispute the legality of the contested decision on the basis of the evidence which it proposes to submit for the first time
to the Court.
Consequently, the applicant’s offer to submit evidence must be rejected.
–       Concerning the applicant’s reference to the arguments put forward in its trade mark application and during the proceedings
before the Board of Appeal
The applicant states in the application initiating the proceedings that the arguments it put forward when submitting its application
for registration of the trade mark and during the proceedings before the Board of Appeal are maintained in full and that they
also form an integral part of this action.
Under Article 21 of the Statute of the Court of Justice and Article 44(1)(c) of the Rules of Procedure of the General Court,
which applies to intellectual property matters by virtue of Articles 130(1) and 132(1) of those rules, applications must include
a brief statement of the grounds relied on.
That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the
defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information
(Joined Cases C‑189/02 P, C‑202/02 P, C‑205/02 P to C‑208/02 P and C‑213/02 P
Dansk Rørindustri and Others
v
Commission
[2005] ECR I‑5425, paragraphs 94 and 100, and Case C‑214/05 P
Rossi
v
OHIM
[2006] ECR I‑7057, paragraph 37).
The Court has also held that, whilst the text of the application may be supported by references to specific passages in documents
annexed to it, a general reference to other documents cannot make up for the absence of the essential arguments in the application
(see Case T‑169/03
Sergio Rossi
v
OHIM – Sissi Rossi (SISSI ROSSI)
[2005] ECR II‑685, paragraph 30 and case-law cited).
It follows that, in so far as it refers to the written pleadings submitted by the applicant before OHIM, the application is
inadmissible because the general reference made in it cannot be linked to the pleas and arguments put forward in the application
(see, to that effect,
SISSI ROSSI
, paragraph 34 above, paragraph 31).
–       Ascertaining the relevant public
The Board of Appeal concluded in the contested decision that the relevant public included all producers and consumers of pharmaceutical,
veterinary and dietetic preparations, food for babies and other food products listed in paragraph 3 above, that is to say
certain professionals as well as the general public. That definition, which is not disputed either by the applicant or by
OHIM, must be approved.
It is thus necessary to examine whether, through its arguments, the applicant manages to establish that the sign Vektor-Lycopin
does not constitute, for the relevant public defined in paragraph 36 above, a description of the characteristics of the goods
concerned and that it is not reasonable to envisage that that would be the case in the future (see paragraphs 25 and 26 above).
–       The applicant’s challenge in respect of the assessment that the term ‘lycopin’ is descriptive
In paragraph 18 of the contested decision, the Board of Appeal stated that the applicant had not submitted any substantiated
evidence to invalidate the examiner’s observations to the effect that the element ‘lycopin’ (lycopene) designated a carotenoid
with antioxidant properties.
For the first time at the hearing, the applicant challenged the Board of Appeal’s assessment that the term ‘lycopin’ is descriptive.
The Court observes that the applicant has not given any details to support its claims and there is thus no need to consider
whether such an argument may be raised at this stage in the proceedings. In particular, the applicant has put forward no argument
capable of calling into question the meaning attributed to the term ‘lycopin’ by the Board of Appeal. In those circumstances,
the Court must find that the applicant has not succeeded in challenging the meaning attributed to the element ‘lycopin’ by
the examiner and by the Board of Appeal.
First, that technical term designates a food supplement necessarily known by some of the relevant public, in particular professionals
dealing with dietetic, pharmaceutical and veterinary preparations.
Secondly, the Board of Appeal established in the contested decision that the meaning of the term ‘lycopin’ was easily accessible
to consumers of all the goods covered by the application for registration. The meaning of the term ‘lycopin’ does in fact
appear in dictionaries and on web sites. It is probable therefore that the substance designated by that term is also known
by some of the consumers of all the goods listed in paragraph 3 above.
Thirdly, consumers of pharmaceutical, veterinary, dietetic and sanitary preparations for medical use who are not aware of
the meaning of the term ‘lycopin’ will often tend to seek advice from the informed section of the relevant public, namely
doctors, pharmacists, dieticians and other traders in the goods concerned. Thus, by means of the advice received from those
who prescribe it or through information from various media, the less well informed section of the relevant public is likely
to become aware of the meaning of the term ‘lycopin’.
The relevant public must therefore be regarded as being aware of the meaning of the term ‘lycopin’, or at least it is reasonable
to envisage that the relevant public will become aware of it in the future (see paragraphs 25 and 26 above).
It should also be noted that it is by no means excluded that lycopene might be incorporated during the preparation of any
of the goods covered by the application for registration. Since the applicant has not limited its application for registration
to goods which do not or could not contain lycopene, the Court finds that there exists, or it is reasonable to envisage that
there will exist in the future, a sufficiently direct and specific link in the mind of the relevant public between the element
‘lycopin’ and the composition of the goods listed in paragraph 3 above (see, to that effect, Case T‑458/05
Tegometall International
v
OHIM – Wuppermann (TEK)
[2007] ECR II‑4721, paragraph 94 and case-law cited).
Hence, the Board of Appeal did not err in finding that the term ‘lycopin’ in the trade mark applied for was descriptive as
regards the goods listed in paragraph 3 above.
–       The applicant’s argument based on the polysemy of the term ‘vektor’
In paragraph 18 of the contested decision, referring to a dictionary entry which OHIM annexed to the response, the Board of
Appeal stated that, in the field of genetic engineering, biology, medicine and plant protection, ‘vektor’ (vector) meant an
agent transmitting a molecule, substance or disease.
Without disputing the meaning adopted by the Board of Appeal, the applicant claims that, in the field of mathematics and physics,
the German term ‘Vektor’ has other meanings.
In order for registration of a sign to be impossible, it is sufficient for that sign to be descriptive in at least one of
its meanings. A word sign must be refused registration under Article 7(1)(c) of Regulation No 40/94 if at least one of its
possible meanings designates a characteristic of the goods or services concerned (
OHIM
v
Wrigley
, paragraph 23 above, paragraph 32).
Clearly, in the sign in question the term ‘vektor’ is combined with the term ‘lycopin’, which, as the Board of Appeal rightly
established, designates a substance which may enter into the composition of goods listed in paragraph 3 above (see paragraph
44 above). Therefore, when construed with the meaning adopted by the Board of Appeal, the term ‘vektor’ will evoke, in the
mind of the relevant public, a property of the goods covered by the application for registration consisting of the capacity
to transmit a substance or an active ingredient which may be included in the composition of those goods.
It follows that, within the meaning adopted by the Board of Appeal, the German term ‘Vektor’ is descriptive of the goods listed
in paragraph 3 above and that, in those circumstances, the applicant cannot succeed by arguing that the same term may have
other meanings in certain specialist fields such as mathematics or physics.
–       The applicant’s argument that the sign Vektor-Lycopin produces an impression that is sufficiently removed from that produced
by the sum of the elements that compose it
It follows from the foregoing that the term ‘vektor’ and the term ‘lycopin’ are both descriptive of the goods covered by the
application for registration (see paragraphs 45 and 50 above).
The applicant claims, however, that the combination of the terms ‘vektor’ and ‘lycopin’ in the sign Vektor-Lycopin is unusual
and unknown, since there is no evidence of that sign either in dictionaries, or in the oral or written language. According
to the applicant, the sign Vektor-Lycopin thus creates an impression sufficiently far from that produced by the meaning of
the terms of which it is composed that the sign, taken as a whole, is more than the sum of its parts.
The Court has consistently held that the juxtaposition of two descriptive words may not be descriptive if, because of the
unusual nature of the combination, the sign at issue creates an impression which is sufficiently far removed from that produced
by the meaning of the terms of which it is composed, with the result that that sign, taken as a whole, is more than the sum
of its parts. In that connection, an analysis of the term in question in the light of the relevant lexical and grammatical
rules is useful (see, to that effect, Case T‑207/06
Europig
v
OHIM (EUROPIG)
[2007] ECR II‑1961, paragraph 29 and case-law cited; see also, by analogy,
Koninklijke KPN Nederland
, paragraph 26 above, paragraphs 98 and 100].
In the sign for which registration is sought in this case, the two terms ‘vektor’ and ‘lycopin’ are linked by a hyphen. As
the Board of Appeal stated without contradiction by the applicant, this way of combining words is usual in both German and
English.
Moreover, for the purpose of assessing the descriptive nature of a sign it is irrelevant whether or not there is evidence
of it in dictionaries (see judgment of 23 October 2007 in Case T‑405/04
Borco-Marken-Import Matthiesen
v
OHIM
(Caipi)
, not published in the ECR, paragraph 42 and case-law cited).
Therefore, the Court finds that, in the mind of the relevant public, the combination Vektor-Lycopin, associated with the food,
dietetic, sanitary, veterinary and pharmaceutical preparations covered by the application for registration, will evoke the
property of those goods as transmitters of lycopene. The relevant public, faced with the sign for which registration is sought
associated with the goods covered by the application for registration, would consider that the goods at issue contain lycopene
and allow consumers of them to assimilate that substance.
Consequently, the Court finds that the combination of the terms ‘vektor’ and ‘lycopin’, as in the sign Vektor-Lycopin, will
constitute in the mind of the relevant public an indication of the properties of the goods listed in paragraph 3 above, and
there is no need to give a ruling on the disputed question whether the relevant public is capable of understanding that the
sign Vektor-Lycopin designates a food additive based on tomato and liquorice extracts manufactured by the applicant.
The Board of Appeal was therefore correct in finding that the mark Vektor-Lycopin consisted exclusively of terms which may
serve, in trade, to designate characteristics of the goods listed in paragraph 3 above and should therefore be refused registration
under Article 7(1)(c) of Regulation No 40/94.
–       The applicant’s argument alleging registration of marks including the terms ‘vektor’ or ‘vector’
The applicant seeks to base an argument on the registration of a number of Community, national or international trade marks
including the term ‘vektor’ but does not provide any evidence to support its claims. At the hearing the applicant also relied
on registration of the sign Vector-Lycopin as a Community trade mark.
It should be noted in that regard that the registrability of a sign as a Community trade mark can be assessed only on the
basis of the relevant Community rules, as interpreted by the judicature of the European Union. Therefore, the fact that, even
under legal systems containing similar rules, marks that are identical or comparable to a mark for which registration is sought
have been registered may, at most, be taken into account for information purposes but cannot be regarded as binding on OHIM
or on the judicature of the European Union (see, to that effect, Case T‑24/00
Sunrider
v
OHIM (VITALITE)
[2001] ECR II‑449, paragraph 33 and case-law cited, and Case T‑16/02
Audi
v
OHIM (TDI)
[2003] ECR II‑5167, paragraph 40 and case-law cited).
Hence, even if it were correct, the applicant’s argument alleging the existence of Community, national and international registrations
of marks including the term ‘vektor’ and of the trade mark Vector-Lycopin is ineffective and must be rejected.
Furthermore, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of the relevant rules
and not on the basis of their previous practice in taking decisions (Case T‑106/00
Streamserve
v
OHIM (STREAMSERVE)
[2002] ECR II‑723, paragraph 66).
Therefore, in any event, the applicant is not justified in claiming that confirmation by the Court of the Board of Appeal’s
decision in this case with regard to registration of the mark Vektor-Lycopin should lead to cancellation of earlier Community
trade marks.
In the light of all the above, the Court finds that the Board of Appeal did not err in confirming the examiner’s refusal to
register the sign under Article 7(1)(c) of Regulation No 40/94.

The plea alleging infringement of Article 7(1)(b) of Regulation No 40/94
It is evident from the wording of Article 7(1) of Regulation No 40/94 that if one of the absolute grounds for refusal listed
in that provision applies that suffices for the sign at issue not to be registrable as a Community trade mark (Case C‑104/00 P
DKV
v
OHIM
[2002] ECR I‑7561, paragraph 29).
Accordingly, the action must be dismissed in its entirety, there being no need to rule on the second plea in law alleging
infringement of Article 7(1)(b) of Regulation No 40/94.

Costs
Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been
applied for in the successful party’s pleadings. As the applicant has been unsuccessful, it must be ordered to pay the costs,
in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.
Dismisses the action;
2.
Orders Exalation Ltd to pay the costs.
Azizi
Cremona
Frimodt Nielsen
Delivered in open court in Luxembourg on 9 July 2010.
[Signatures]
*
Language of the case: German.