October 2004
Trade mark protection and a greater tolerance to combination of marks devoid of distinctiveness
The European Court of Justice ruled that a trade mark made up of a word and a number - neither of which has a distinctive character of its own - may be sufficiently distinctive for TM protection when combined.
SAT.1 applied to OHIM in 1997 to register "SAT.2" as a Community trade mark for certain goods and various services, principally in the media and information sector. The application was rejected on the grounds that 'SAT.2' was devoid of distinctive character, so an action was brought before the Court of First Instance (CFI). The CFI upheld OHIM's decision but annulled the part of the decision which related to all other services, other than those having a connection with satellite broadcasting.
The ECJ however went on to annul the decision of the OHIM in its entirety and ruled 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. The ECJ ruled, "the distinctiveness of each of those terms or elements, taken separately, may be assessed, in part, but must, in any event, depend on an appraisal of the whole which they comprise. Indeed, the mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present a distinctive character." 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.
BRIFFA Comment:
Essentially, the court reiterated that a sign should not necessarily be available to all and sundry but its availability should not be unduly restricted for others offering the same or similar goods and services. The decision reveals a more tolerant approach to combined trade marks made up of descriptive elements. Limits formerly imposed on applications of this kind may be assessed more leniently. Previously rejected applications may resurrect themselves, claiming that if taken as a whole, rather than separated in to their component parts, consumers may be well placed to assess distinctiveness. However, the level of distinctiveness that a mark needs to reach to be accepted as registrable by the CFI/ECJ (and therefore by OHIM) remains difficult to gauge. It is very difficult to reconcile the ECJ's ruling on the trade mark Companyline and the same court's acceptance of the trade mark Baby-Dry (for nappies). Further, it is not at all clear why marks such as Kit Pro and Super Kit Pro, which really are syntactically unusual marks, stand rejected when earlier CFI decisions have accepted marks such as Doublemint, Easybank and New Born Baby as distinctive for confectionery, banking services and dolls respectively.