Judgment — ECLI:EU:T:2002:172
Date: 2002-07-02
Language of the case: German
Court formation: Second Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks;Actions before the Community Courts;General;Descriptive marks;Appeals before the Boards of Appeal
Procedure: Action for annulment - unfounded;Action for annulment - successful
Origin: Germany

Summary of the Judgment 
1. Community trade mark — Appeals procedure — Appeals before the Community 
judicature — Possibility for the Court of First Instance to alter the contested 
decision — Limits 
(Council Regulation No 40/94, Art. 63(3» 
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SUMMARY — CASE T-323/00 
2. Community trade mark — Appeals procedure — Decision on the appeal — Obli­
gation incumbent on the Board of Appeal — Scope — Consequences in case of failure 
to fulfil 
(Council Regulation No 40/94, Art. 62(1)) 
3. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks composed exclusively of signs or 
indications which may serve to designate the characteristics of a product or a service — 
Criteria in the case of a compound word mark 
(Council Regulation No 40/94, Art. 7(1)(c)) 
4. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks composed exclusively of signs or 
indications which may serve to designate the characteristics of a service — 'SAT.2' 
(Council Regulation No 40/94, Art. 7(1)(c)) 
5. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal set out in Article 7(1)(b) to (e) of Regulation 
No 40/94 — Aim — Requirement of free availability — Relationship with the 
exception provided for in Article 7(3) of the regulation 
(Council Regulation No 40/94, Arts 7(1)(b) to (e) and 3)) 
6. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Signs devoid of distinctive character — 
Definition — Appraisal criteria 
(Council Regulation No 40/94, Art. 7(1)(b)) 
7. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Signs devoid of distinctive character — 
Examination in the case of a compound trade mark 
(Council Regulation No 40/94, An. 7(1) (b)) 
8. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Descriptive character and lack of distinctive 
character of a sign — Relationship between the corresponding provisions 
(Council Regulation No 40/94, Art. 7(1)(b) and (c)) 
II - 2840 
SAT.l v OHIM (SAT.2) 
9. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks composed exclusively of signs or 
indications which may serve to designate the characteristics of a product or a service — 
Appraisal of the descriptive character of a sign — Account to be taken only of the 
categories of products and/or services referred to in the application for registration 
(Council Regulation No 40/94, Art. 7(1)(c)) 
10.Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Signs devoid of distinctive character — 
'SAT.2' 
(Council Regulation No 40/94, Art. 7(1)(b)> 
11. Community trade mark — Decisions of the Office — Registrability of a sign — 
Examination by the Community judicature — Criteria — Application to a plea 
alleging breach of the principle of non-discrimination in the Office's decision-making 
practice 
1. Although is true that Article 63(3) of 
Regulation No 40/94 on the Commu­
nity trade mark provides for the possi­
bility that the Court may alter 
decisions of a Board of Appeal of the 
Office for Harmonisation in the Inter­
nal Market (Trade Marks and 
Designs), that possibility is, in prin­
ciple, restricted to situations in which 
the case has reached a stage permitting 
final judgment. That is not so where 
the Board of Appeal has failed to rule 
on the merits of an entire head of claim 
submitted by the applicant. 
(see para. 18) 
2. According to the first sentence of 
Article 62(1) of Regulation No 40/94 
on the Community trade mark, '[f]ol-
lowing the examination as to the 
allowability of the appeal, the Board 
of Appeal shall decide on the appeal'. 
That obligation must be understood as 
meaning that the Board of Appeal is 
required to rule on each of the heads of 
claim before it in full by upholding it, 
dismissing it as inadmissible or dismis­
sing it in substance. Where failure to 
fulfil that obligation may affect the 
content of the decision being chal­
lenged before the Court, such obli­
gation represents an essential pro­
cedural requirement breach of which 
may be raised by the Court of its own 
motion. 
(see para. 19) 
3. In order to fall within the scope of 
Article 7(1 )(c) of Regulation No 40/94 
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SUMMARY — CASE T-323/00 
on the Community trade mark, a trade 
mark must consist 'exclusively' of signs 
or indications which may serve to 
designate a characteristic of the goods 
or service concerned. It follows from 
that requirement that where a word 
mark consists of several features (a 
compound mark) account must be 
taken of the relevant significance of 
the word mark applied for, on the basis 
of all of its components, and not 
merely of the significance of one of 
them. Furthermore, account must be 
taken, for the purposes of that apprai­
sal, only of such characteristics of the 
goods or services concerned as are 
likely to be taken into account by the 
relevant public when making its choice. 
Thus, if a compound word mark is to 
be considered to be descriptive, it must 
only designate such characteristics. 
(see para. 26) 
4. Under Article 7(1)(c) of Regulation 
40/94 on the Community trade mark, 
'trade marks which consist exclusively 
of signs or indications which may 
serve, in trade, to designate the... 
intended purpose... of the goods or of 
rendering of the service, or other char­
acteristics of the goods or service' are 
not to be registered. 
In that regard, registration of 'SAT.2' 
in respect of certain services does not 
fall within the scope of the abovemen-
tioned provision inasmuch as, assum­
ing that its relevant meaning is 'second 
satellite channel', it may, indeed, serve 
to designate a characteristic of some of 
the services concerned which is likely 
to be taken into account by the relevant 
public when making its choice, namely 
the fact that they have to do with 
satellite broadcasting, but to the extent 
that it does not designate such a char­
acteristic in so far as it indicates that it 
involves a second channel. 
(see paras 26-27) 
5. The absolute grounds for refusal set 
out in Article 7(1)(b) to (e) of Regu­
lation No 40/94 on the Community 
trade mark pursue an aim which is in 
the public interest, which requires that 
the signs they refer to may be freely 
used by all. Unlike other intellectual 
and industrial property rights, the legal 
protection afforded to trade marks is 
not intended, in principle, to cover the 
result of a creative or economic effort 
of the proprietor of the right but only 
the sign 'occupied' by him. Accord­
ingly, it is necessary to rule out the 
creation of an exclusive right over a 
sign which, in order to avoid conceding 
an unjustified competitive advantage to 
a single trader, must be freely available 
for use by everyone. It is only in the 
II - 2842 
SAT.1 v OHIM (SAT.2) 
event that such a sign, in consequence 
of the use to which it has been put, is 
actually perceived by the relevant pub­
lic as an indication of the trade origin 
of the goods or service that the econ­
omic effort made by the trade mark 
applicant justifies putting aside the 
public-interest considerations set out 
above. Accordingly, in such a case, 
Article 7(3) of Regulation No 40/94 
allows registration of such a sign, as an 
exception to the general rule enshrined 
in Article 7(1 )(b) to (d). 
(see para. 36) 
6. The t rade marks covered by 
Article 7(l)(b) of Regulation No 40/94 
on the Community trade mark are in 
particular those which, from the point 
of view of the relevant public, are 
commonly used, in trade, for the pres­
entation of the goods or services con­
cerned or in connection with which 
there exists, at the very least, concrete 
evidence justifying the conclusion that 
they are capable of being used in that 
manner. Consequently, the distinctive 
character of a trade mark can be 
appraised only, first, by reference to 
the goods or services for which regis­
tration is sought and, secondly, by 
reference to the way it is perceived by 
the relevant public. 
(see paras 36-37) 
7. When examining the absolute ground 
for refusal set out in Article 7(1 )(b) of 
Regulation No 40/94 on the Commu­
nity trade mark, where what is 
involved is a compound trade mark, 
appraisal of its distinctive character 
calls for it to be considered as a whole. 
However, that is not incompatible with 
an examination of each of the trade 
mark's individual features in turn. A 
compound trade mark falls within the 
scope of the abovementioned provision 
only if all the elements of which it 
consists are devoid of distinctive char­
acter in relation to the goods or 
services listed in the application for a 
trade mark. 
Conversely, the fact that a compound 
trade mark consists only of elements 
devoid of distinctive character gen­
erally justifies the conclusion that that 
trade mark, considered as a whole, is 
also capable of being commonly used, 
in trade, for the presentation of the 
goods or services concerned. The eon­
II - 2843 
SUMMARY — CASE T-323/00 
elusion would not apply only if con­
crete evidence, such as, for example, 
the way in which the various elements 
were combined, were to indicate that 
the compound trade mark was greater 
than the sum of its parts. 
(see paras 39, 49, 55) 
8. A sign which is descriptive of the goods 
or services listed in the application for 
a trade mark, within the meaning of 
Article 7(1)(c) of Regulation No 40/94 
on the Community trade mark, is also 
devoid of any distinctive character in 
relation to those goods or services, 
within the meaning of Article 7(1)(b). 
That interpretation is not incompatible 
with the rule to the effect that each of 
the two absolute grounds for refusal in 
question has its own sphere of appli­
cation. Thus, an individual sign which, 
according to the semantic rules of the 
relevant language, may serve to desig­
nate the characteristics of the goods or 
services concerned likely to be taken 
into account by the relevant public 
when making its choice is, thus, likely 
to be commonly used, in trade, for the 
presentation of those goods or services 
and falls, therefore, within the scope of 
Article 7(1)(b) of Regulat ion 
No 40/94. On the other hand, 
Article 7(1)(c) is only applicable where 
the trade mark applied for consists 
'exclusively' of such signs or indi­
cations. 
(see para. 40) 
9. A sign's descriptiveness, within the 
meaning of Article 7(1)(c) of Regu­
lation No 40/94 on the Community 
trade mark, must be assessed individ­
ually by reference to each of the 
categories of goods or services listed 
in the application for a trade mark. For 
the purposes of assessing a sign's 
descriptiveness in respect of a particu­
lar category of goods or services, 
whether the applicant for the trade 
mark in question is contemplating 
using or is actually using a particular 
marketing concept involving goods and 
services in other categories in addition 
to the goods and services within that 
category is immaterial. First, whether 
or not there is a marketing concept is of 
no consequence to the right conferred 
by the Community trade mark and, 
secondly, since a marketing concept is 
purely a matter of choice for the 
undertaking concerned, it may change 
after registration as a Community trade 
mark and it cannot therefore have any 
II - 2844 
SAT.1 v OHIM (SAT.2) 
bearing on the assessment of the sign's 
registrability. 
(see para. 45) 
10. According to Article 7(1)(b) of Regu­
lation No 40/94 on the Community 
trade mark, 'trade marks which are 
devoid of any distinctive character' are 
not to be registered. In addition, 
Article 7(2) of Regulation No 40/94 
states that 'paragraph 1 shall apply 
notwithstanding that the grounds of 
non-registrability obtain in only part of 
the Community'. 
As regards an application to register 
SAT.2 as a trade mark in respect of the 
following services which come within 
Classes 38, 41 and 42 of the Nice 
Agreement concerning the Inter­
national Classification of Goods and 
Services for the Purposes of the Regis­
tration of Marks: 
— Class 38: 
'Wireless or hard-wire networked 
broadcast of radio and television 
transmissions/programmes; broad­
casting of film, television, radio, 
video text and teletext programmes 
or transmissions; arranging and 
allocating of user passwords for 
users of various communication 
networks; telecommunications; 
gathering, delivering and transmit­
ting messages, press reports (includ­
ing using electronic means and/or 
by computer); transmission of 
sound and images by means of 
satellites; broadcasting Pay TV 
including video on demand, includ­
ing for others on a digital platform; 
services relating to telecommuni­
cations and a database; providing 
information to others; dissemi­
nation of information via wireless 
or cable networks; on-line services 
and transmissions, namely transfer 
of information and messages 
including E-mail; operation of net­
works for the transfer of messages, 
images, text, speech and data; 
broadcasting of teleshopping pro­
grammes'; 
— Class 41: 
'Production, reproduction, showing 
and rental of films, videos and other 
television programmes; production 
and reproduction of data, speech, 
text, sound and image recordings 
on video and/or audio cassettes, 
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SUMMARY — CASE T-323/00 
tapes and discs (including CD-
ROMs and CD-i's) and of video 
games (computer games); demon­
stration and rental of video and/or 
audio cassettes, tapes and discs 
(including CD-ROMs and CD-i's) 
and of video games (computer 
games); rental of television receiv­
ing apparatus and decoders; edu­
cation, providing of training, enter­
tainment; sporting and cultural 
activities; organisation and con­
ducting of shows, quizzes and musi­
cal events and conducting compe­
titions in the entertainment and 
sporting field, including for record­
ings or being live broadcasts on 
radio or television; production of 
television and radio advertising 
broadcasts including associated 
prize game broadcasts; conducting 
competitions in the fields of train­
ing, teaching, entertainment and 
sports; distance learning courses; 
publishing books, periodicals and 
other printed matter and associated 
electronic media (including CD-
ROMs and CD-i's); conducting 
concert, theatre and entertainment 
events and sporting competitions; 
production of film, television, 
radio, teletext and videotext pro­
grammes or transmissions, radio 
and television entertainment; 
production of films and videos and 
radio and television programmes of 
a training, teaching and entertain­
ing nature, including such produc­
tion for children and young people; 
production, reproduction, showing 
and rental of sound and image 
recordings on video and/or audio 
cassettes, tapes and discs; theatrical 
performances and orchestra ser­
vices; recording, transmission, stor­
ing, processing and reproduction of 
sound and images; organising radio 
and television broadcasts/pro­
grammes; production of teleshop­
ping programmes'; 
— Class 42: 
'Issuing, negotiating, rental and 
other exploitation of rights to films, 
television and video productions 
and other image and sound pro­
grammes; copyright and industrial 
property rights exploitation for 
others; exploitation of film and 
television ancillary rights in the 
field of merchandising; software 
development, in particular in the 
fields of multimedia, interactive 
television and Pay-TV; operation 
of networks for the transfer of 
messages, images, text, speech and 
data; technical consultancy in the 
field of multimedia, interactive 
television and Pay TV (included in 
class 42); computer programming, 
including video and computer 
games; arranging and allocating of 
user passwords for users of various 
communication networks', 
the abovementioned trade mark is 
devoid of any distinctive character in 
relation to the categories of services 
II - 2846 
SAT.l v OHLM (SAT.2) 
listed above, with the exception of the 
following categories: 
— 'Services relating to a database' 
within Class 38; 
— 'Production and reproduction of 
data, speech, text, sound and image 
recordings on video and/or audio 
cassettes, tapes and discs (including 
CD-ROMs and CD-i's) and of video 
games (computer games); demon­
stration and rental of video and/or 
audio cassettes, tapes and discs (in­
cluding CD-ROMs and CD-i's) and 
of video games (computer games); 
rental of television receiving appar­
atus and decoders; education, pro­
viding of training, entertainment; 
sporting and cultural activities; con­
ducting competitions in the fields of 
training, teaching, entertainment 
and sports; distance learning 
courses; publishing books, period­
icals and other printed matter and 
associated electronic media (includ­
ing CD-ROMs and CD-i's); con­
ducting concert, theatre and enter­
tainment events and sporting com­
petitions; production of films and 
videos and radio and television pro­
grammes of a training, teaching and 
entertaining nature, including such 
production for children and young 
people; production, reproduction, 
showing and rental of sound and 
image recordings on video and/or 
audio cassettes, tapes and discs; 
theatrical performances and orches­
tra services' within Class 41; 
— 'Issuing, negotiating, rental and 
other exploitation of rights to films, 
television and video productions and 
other image and sound programmes; 
copyright and industrial property 
rights exploitation for others; 
exploitation of film and television 
ancillary rights in the field of mer­
chandising; software development, 
in particular in the fields of multi­
media, interactive television and 
Pay-TV; operation of networks for 
the transfer of messages, images, 
text, speech and data; technical 
consultancy in the field of multi­
media, interactive television and 
Pay-TV (included in class 42); com­
puter programming, including video 
and computer games; arranging and 
allocating of user passwords for 
users of various communication net­
works' within Class 42. 
As regards those services, the trade 
mark applied for consists of a com­
bination of elements each of which is at 
II - 2847 
SUMMARY — CASE T-323/00 
the very least capable of being com­
monly used, in trade, for the presenta­
tion of such services. 
On the other hand, the abovemen-
tioned trade mark is not devoid of 
distinctive character in relation to the 
services referred to above as excep­
tions. 
Thus, the sign 'SAT' does not designate 
any characteristic of such services 
likely to be taken into account by the 
relevant public when making its choice, 
nor is there any indication that that 
sign — despite the absence of distinc­
tive character •—• is capable of being 
commonly used, in trade, for the pres­
entation of those services. 
(see paras 48, 53-54, 56) 
11. Decisions concerning registration of a 
sign as a Community trade mark which 
the Boards of Appeal of the Office for 
Harmonisation in the Internal Market 
(Trade Marks and Designs) are called 
on to take under Regulation No 40/94 
are adopted in the exercise of circum­
scribed powers and are not a matter of 
discretion. Accordingly, the registrabil­
ity of a sign as a Community trade 
mark must be assessed only on the 
basis of the relevant Community legis­
lation, as interpreted by the Commu­
nity judicature, and not on the basis of 
a different approach taken in the past 
by the Boards of Appeal in their 
decisions. 
With regard to a plea in law submitted 
before the Community judicature alleg­
ing that the Office infringed the prin­
ciple of non-discrimination by refusing 
to register a certain sign when it had 
previously registered a comparable 
sign, there exist two hypotheses. 
If, by accepting in a previous case the 
registrability of a sign as a Community 
trade mark, the Board of Appeal cor­
rectly applied the relevant provisions of 
Regulation No 40/94 and in a later, 
similar, case it adopted a contrary 
decision, the Community judicature 
will be required to annul the latter 
decision for infringement of the rel­
evant provisions of Regulation 
No 40/94. On this first hypothesis, 
the plea alleging breach of the principle 
of non-discrimination must therefore 
fail. On the other hand, if, by accepting 
in an earlier case the registrability of a 
sign as a Community trade mark, the 
Board of Appeal erred in law and in a 
later, similar, case it adopted a 
II - 2848 
SAT.l v OHIM (SAT.2) 
contrary decision, the first decision 
cannot successfully be relied on to 
support an application for the annul­
ment of the later decision, since observ­
ance of the principle of equal treatment 
must be reconciled with observance of 
the principle of legality, according to 
which no person may rely, in support 
of his claim, on unlawful acts com­
mitted in favour of another. Thus, on 
this second hypothesis, the plea alleg­
ing breach of the principle of non­
discrimination must therefore also fail. 
(see paras 60-61) 
II - 2849