timarbaev /
24 April 2018Europe

EU court denies Genomic Health TM appeal

Genomic Health, a California-based company that focuses on genetic research in cancer detection, has failed to overturn a trademark decision in Europe.

Yesterday, the EU General Court rejected Genomic Health’s appeal and ordered the company to pay costs.

In March 2016, Genomic Health filed to register ‘Oncotype dx genomic prostate score’ as an EU trademark (EUTM) for class 44, covering “medical testing for diagnostic and treatment purposes in the field of cancer”.

But in April 2016, the examiner raised an objection to the mark, finding that it was descriptive and had no distinctive character.

Genomic Health appealed against the examiner’s final decision to the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO).

In February last year, the Fifth Board of Appeal dismissed the California-based company’s appeal in its entirety.

According to the appeal board, the trademark was descriptive of the services provided, and because of this it is “limited to a simple message describing what those services seek to achieve without any fanciful or distinctive elements that would make the sign memorable for the public”.

Again, Genomic Health appealed against the decision. It asked the General Court to annul the contested decision and change it to confirm that there were no grounds for refusal of the trademark.

Genomic Health claimed that the appeal board had erred in concluding that the trademark had a “sufficiently direct and specific link with the services covered, to enable the public concerned to perceive immediately, and without further thought, a description of the services in question”.

But the General Court disagreed, noting that the appeal board had analysed definitions in the Collins English Dictionary, as well as those in an online medical dictionary, and then gone on to analyse the perception of the mark applied for as a whole by the relevant public

“The Board of Appeal thus found that the part of the relevant public comprised of medical professionals would, at least, be capable of easily perceiving that the mark applied for, taken as a whole, refers to services which can detect, diagnose, and measure the genetic possibility of a prostate tumour.”

The court rejected Genomic Health’s plea that the trademark has a distinctive character, calling it “ineffective” in light of the refusal for registration based on descriptiveness.

Genomic Health also contended that the appeal board had not given sufficient weight to the fundamental principles of equal treatment, good administration and legal certainty.

In particular, the California company argued that the board didn’t take sufficient account of the acceptance of registration of EUTMs which were highly similar to the applied-for mark for class 44.

Considering that the earlier trademarks don’t constitute precedents and in “upholding the arbitrary refusal of registration of the mark applied for”, the contested decision risks introducing a “large degree of uncertainty into the practice of the EUIPO”, claimed Genomic Health.

The General Court dismissed the argument and noted that the assessment can’t be called into question on the “sole ground” that the appeal board didn’t follow the EUIPO’s decision-making practice.

Genomic Heath was ordered to pay the costs of the dispute.

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