Opinion may clarify principles behind lack of distinctiveness

In SAT.1 SatellitenFernsehen GmbH v Office for Harmonization in the Internal Market (OHIM), Advocate General Jacobs has clarified the principles to be applied when assessing whether a mark lacks distinctiveness pursuant to the Community Trademark Regulation. Jacobs examined the relationship and highlighted the differences between the grounds for refusal set out in subparagraphs (a) to (c) of Article 7(1).

The opinion stems from an OHIM refusal to register German television broadcaster SAT.1 SatellitenFernsehen GmbH's SAT.2 mark for various goods and services in a number of different classes of the Nice Classification. The OHIM found that the mark lacked distinctiveness and its decision was upheld by the European Court of First Instance (CFI). The case is pending before the European Court of Justice (ECJ).

In his opinion, Jacobs first examined the concept of distinctiveness. He noted that Article 4 of the Community Trademark Regulation, which is repeated in Article 7(1)(a), requires signs to be capable of distinguishing the goods or services of one undertaking from those of other undertakings. If a sign is not capable of serving that purpose, it is devoid of any distinctive character. Jacobs noted that there has been some confusion as to the relationship between subparagraph (a) of Article 7(1) and subparagraph (b), which precludes registration of marks lacking distinctiveness. He suggested that the lack of distinctiveness described in Article 4 and thus Article 7(1)(a) concerns signs not having "a general, absolute, abstract capacity to distinguish products of different origins". On the other hand, the absolute grounds for refusal in Article 7(1)(b) relates to a lack of distinctiveness in relation to the specific class of product or service covered by a proposed registration.

He next analyzed how Article 7(1)(b) interacts with Article 7(1)(c). Jacobs stated that the public interest behind Article 7(1)(c), which precludes from registration signs that are descriptive of the goods and services to which they relate, is that such signs should be freely available for use by all. In his view, this public interest does not apply to Article 7(1)(b) unless the signs also have some close relationship with the products or services to which they apply. Thus, there is some scope for overlap between subparagraphs (b) and (c) but subparagraph (b) has an independent capacity.

With reference to the SAT.2 mark, Jacobs agreed with the CFI's reasoning that:

• the mark consisted of two main elements, namely 'SAT' and '2';
  
  
• the 'SAT' element was descriptive of satellite broadcasting services and related products; and
  
  
• it also lacked distinctiveness in relation to those services and products.

He stated that descriptive elements commonly used in trade for goods and services are also very likely to lack distinctiveness. However, in contrast to the CFI, Jacobs held that the '2' element was not descriptive as numerals are generally used to distinguish between the products of different suppliers. The fact that numbers are commonly used in trade does not mean that they lack distinctive character. He went on to suggest that "the presence of a numerical identifier is clearly designed to ensure distinctiveness". Jacobs backed up this point by referring to several broadcasting companies (or their related broadcast channels) whose names include numbers (eg, BBC 1, Kanaal 2, MTV 3, Tele 5 and TV4) presumably as a means of distinguishing themselves from their competitors or related companies.

Jacobs was also critical of the way the CFI approached its examination of the mark. The CFI had analyzed the separate elements of SAT.2 and determined that each element lacked distinctiveness. From this, it deduced that the mark as a whole lacked distinctive character. In Jacobs's opinion, even if all the elements making up a trademark lack distinctiveness, this does not mean that the combination of such elements also lacks distinctiveness. He stated that the CFI should have examined the mark as a whole.

It will be interesting to see whether the ECJ approves Jacobs's conclusions.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna