Court of Justice (Second Chamber) 16 September 2004, C-329/02 P (SAT.1 SatellitenFernsehen GmbH v European Union Intellectual Property Office.)

Also known as

In an appeal concerning the refusal by OHIM's Second Board of Appeal to register 'SAT.2' as a Community trade mark for satellite broadcasting-related services under Article 7(1)(b) of Regulation (EC) No 40/94, the Court of Justice (Second Chamber) held that the Court of First Instance erred in law by assessing the distinctive character of the compound sign through a piecemeal analysis of its individual elements rather than an overall appraisal of the term as perceived by the average consumer, and by applying a criterion of free availability more appropriate to Article 7(1)(c) than to Article 7(1)(b). The Court further held that OHIM had failed to demonstrate, by reference to the term 'SAT.2' as a whole, that it was incapable of distinguishing the applicant's services from those of other undertakings, particularly given the frequent use of word-and-number combinations in the telecommunications sector and the Office's inconsistent treatment of structurally comparable marks. Accordingly, the contested judgment was set aside, the decision of 2 August 2000 was annulled in its entirety, and OHIM was ordered to pay the costs of both proceedings.AI