ECJ BANS TRADE MARK EXAMINERS FROM SLICING THEIR SALAMI

When considering the distinctiveness of a compound trade mark, for example a sign made up of letters and numbers, the correct approach is to pretend that you are the relevant consumer of the goods or services for which the applicant seeks registration of the mark and then to consider the trade mark as a whole. There's nothing to be gained, therefore, from "salami-slicing" the sign up into its component parts and then ruling that each of those parts, by itself, is non-distinctive and then concluding that the whole mark can't be more distinctive than the sum of its parts. That's the moral of the European Court of Justice (ECJ) ruling last Thursday in Case 329/02 SAT.1 Satellitenfernsehen GmbH v OHIM.

The applicant's mark in this case, SAT.2, was sought for satellite and satellite broadcasting services. OHIM and the Court of First Instance (CFI) refused registration on the basis that "Sat" was short for satellite, "2" was a number used in the presentation of such services and ".", being just a punctuation mark, had no distinctive character at all. The ECJ disagreed, emphasising that

* there is no presumption that elements which are individually devoid of distinctive character cannot, on being combined, be perceived by the relevant consumer as being distinctive.

* there is no specific level of linguistic or artistic creativity or imaginativeness that must be shown before a trade mark can be registered. It's enough for a mark to enable the relevant public to identify the origin of the goods or services and to distinguish them from those of other undertakings.

* the frequent use of trade marks consisting of a word and a number in the telecommunications sector showed that such a combination cannot be considered to be devoid, in principle, of distinctive character.

The IPKat is thrilled with this decision, reminding readers that the CFI's judgment was vigorously criticised by Jeremy Phillips in his book, Trade Mark Law: a Practical Anatomy, published last year by Oxford University Press.

More on salami here, here and here
Naughty things to do with salami here, here and here