Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Celltech R&D Ltd.
Date: 2007-04-19
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).
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).
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).
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
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).