Out-Law / Your Daily Need-To-Know

Distinctiveness of trade marks: European ruling

17 Sep 2004, 12:00 am

Good news for SAT.2: the European Court of Justice this week ruled that a trade mark made up of word and a number – neither of which has a distinctive character of its own – may be sufficiently distinctive for TM protection when combined.

The case related to German television broadcasting station SAT.1 SatellitenFernsehen GmbH, which in 1997 applied to the Office for Harmonisation in the Internal Market (OHIM) to register "SAT.2" as a Community trade mark for certain goods and various services, principally in the media and information sector.

OHIM refused the application on the ground that that term was devoid of any distinctive character, so SAT.1 then brought an action before the Court of First Instance.

The action turned on the interpretation of a provision in the Community trade mark regulation, which states that trade marks that are devoid of any distinctive character or that are basically descriptive of the goods or service in question shall not be registered, unless "the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it."

The Court of First Instance upheld SAT.1's application in part, ruling:

that the term 'SAT.2' was not descriptive of the services concerned within the meaning of the provision, and
that the term was, in view of its constituent elements, devoid of any distinctive character within the meaning of the regulation only in respect of part of the services having a connection with satellite broadcasting.

The Court of First Instance therefore annulled the decision of OHIM in relation to all other services, but stated that there was an absolute ground to refuse to register the trade mark with regard to services having a connection with satellite broadcasting.

SAT.1 appealed and now, over seven years after the application was first made, the European Court of Justice has overruled the lower court in so far as it confirmed an absolute ground for refusal to register.

According to the Court of Justice, the Court of First Instance misinterpreted the ground for refusal to register constituted by absence of any distinctive character.

The Court of Justice did not question the assessment of the Court of First Instance according to which the various elements of the term 'SAT.2', taken in isolation, are devoid of any distinctive character. Nor was it concerned with the Court of First Instance's observation that it was appropriate, for the purpose of assessing the distinctive character of a compound trade mark, to consider it as a whole.

However, the Court of Justice commented that the Court of First Instance based its decision on an assessment carried out essentially by means of a separate analysis of each element rather than on an examination of the whole.

The question as to whether a term such as 'SAT.2' has a distinctive character and is registrable as a Community trade mark must be assessed on the basis of its overall perception by the average consumer, said the Court.

Such an overall analysis makes it possible to bring out the distinctive character of a trade mark even when, considered singly, those elements may be devoid of any such character.

According to the Court:

"Registration of a sign as a trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services protected thereby and to distinguish them from those of other undertakings".

The Court of Justice also found that the Court of First Instance committed an error in using in its appraisal of distinctive character a public-interest criterion that is relevant only when considering whether the trade mark is descriptive.

An earlier decision of the Court of Justice, in relation to the registration of a simple colour as a trade mark, ruled that the public interest to be taken into consideration when assessing distinctive character does not require that the signs concerned should be freely available to all; rather, they require their availability not to be unduly restricted for other operators offering goods or services of the same type as those in respect of which registration is sought.

Following on from this, said the Court, the public interest to be taken into account in assessing distinctiveness cannot be separated from the essential function of a trade mark, which is to guarantee the origin of the trade marked product or service to the consumer or end-user.

Finally, the Court of Justice went on to annul the decision of the Office in its entirety, ruling that:

As regards distinctive character, it is sufficient that the trade mark enables the relevant public to identify the origin of the goods or services concerned and to distinguish them from those of other undertakings;
OHIM merely stated in its decision that the elements 'SAT' and '2' were in common usage in the media services sector without indicating in what way the term 'SAT.2', taken as a whole, is not capable of distinguishing the services of the company from those of other undertakings; and
The frequent use of trade marks consisting of a word and a number in the telecommunications sector shows that that kind of combination cannot be considered to be devoid, in principle, of distinctive character.