SALAMI-SLICING DECISION TO GET THE CHOP?

Last Thursday Advocate General Francis Jacobs gave his Opinion in Case C-329/02 P, where Sat.1 SatellitenFernsehen GmbH appealed against the Court of First Instance's refusal to allow the registration of the word mark SAT.2 for a wide variety of services, including satellite broadcasting. The CFI ruled that SAT.2 was lacking in distinctive character (Regulation 40/94, Art.7(1)(b)) in relation to the satellite broadcasting. In doing so, the CFI stated that the basis of Art.7(1)(b) was the need to keep non-distinctive signs free for general use; as to Art.7(1)(c), the CFI adopted a vicious "salami-slicing" approach to registrability, ruling that since "Sat", "." and "2" each lacked distinctiveness in themselves, SAT.2 must be equally lacking in distinctive character. The Advocate General has recommended that the ECJ allow the appeal: the fact that a sign, or part of a sign, is not sufficiently distinctive to serve as a trade mark is not in itself a reason why it should be kept free for others to use. The ECJ's earlier ruling on colour marks in Libertel did not say that Art.7(1)(b) required that such marks should kept free for general use, but rather that businesses should not be unduly restricted in terms of the availability of colours. The AG also disapproved of the salami-slicing operation: marks must be considered as a whole, not in molecular quantities.



The IPKat is very happy with this Opinion, which he hopes the ECJ will adopt. He would however remind the applicant that, even if the mark is registered, the degree of protection which this largely descriptive mark is likely to confer will be very narrow.



Some unsavoury salami-slicing here , here and here

Salami-slicers here

Salamis here; chocolate salami here; intellectually stimulating salami joke here