Legal Updates

Intellectual Property Law – Community Trade Mark – Passing Off – Likelihood of Confusion

The recent case of Last Minute Network Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Last Minute Tour SpA Intervening) [2009], involved a determination relating to two community trade marks. On 25 February 2000, the applicant in this case filed an application for the registration of a Community trade mark in respect of the word sign ‘LASTMINUTE.COM’ with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”).

The corresponding goods and services in respect of which registration was sought fell into class 39 and class 42. However, the application for registration was refused. The application was refused by the examiner on the grounds that the word sign ‘LASTMINUTE.COM’ was devoid of distinctive character.

The applicant duly elected to challenge the examiner’s decision, however the appeal was dismissed by the Second Board of Appeal of OHIM again on the basis that ‘LASTMINUTE.COM’ lacked distinctive character.

On the 11 March 2000, the intervener in this case filed an application with OHIM for registration of a Community trade mark in respect of the figurative sign ‘LAST MINUTE TOUR’ for goods and services in class 16, class 39 and class 42. This was eventually registered on the 14 May 2003.

The applicant duly gave notice of opposition to the registration of the sign applied for by the intervener by relying on the unregistered word mark ‘LASTMINUTE.COM’ as it existed in the UK. The applicant asserted that it was this unregistered word mark which it had been using in the course of its trade.

The opposition was rejected by a decision of the Opposition Division of OHIM and the mark ‘LAST MINUTE TOUR’ was duly registered.

The applicant in this case duly filed an application for a declaration that the Community trade mark ‘LAST MINUTE TOUR’ was invalid. The applicant relied on Article 8(4) and Article 52(1)(c) of Regulation 40/94 (“the Regulation”), which is now Article 53(1)(c) of Regulation 207/2009.

The Cancellation Division partly upheld the applicant's application for a declaration of invalidity in respect of the Community mark ‘LAST MINUTE TOUR’. With regard to all services falling within class 39 and class 42, the Community mark was declared invalid. However, no such declaration was made in respect of the goods falling within Class 16. It was held that there were a number of similarities between the two marks, even though there were several distinguishing features. This meant that there was a likelihood of confusion between the two marks.

The intervener then sought an annulment of the decision made by the Cancellation Division in respect of the declaration of invalidity, and the applicant sought to have annulled the Cancellation Division's decision relating to the refusal to declare the Community mark invalid with respect to the goods in Class 16.

The Second Board of Appeal of OHIM made two decisions on the 8 February 2007 (“the Contested Decisions”):

Firstly, the intervener's appeal was allowed and the decision to cancel the registration of ‘LAST MINUTE TOUR’ for the services in Classes 39 and 42 was annulled.

Secondly, the applicant's appeal was dismissed.

Accordingly, the Board of Appeal decided that even though there were similarities between the less distinctive elements of the two marks, the two marks were deemed not sufficiently similar to give rise to a likelihood of confusion.

The applicant duly appealed to the Court of First Instance of the European Communities, and presented an argument requesting that the Contested Decisions should be annulled. The applicant alleged infringement of Article 8(4) of the Regulation. Its complaints related to:
 

• The definition of the relevant public;
• The independent reputation enjoyed by the expression “last minute” at the time when the application for the Community trade mark was initially filed; and
• The misleading character which might have existed at the time in respect of the identical services offered to those offered by the applicant and the complementary goods produced in the UK under the sign ‘LAST MINUTE TOUR’.

The Court held as follows:

• In an action for passing off, the misleading nature of the representation of the defendant's goods and services should be assessed with regard to the claimant's customers and not an abstract notion of the average consumer, as was used by the Board of Appeal in this case. The property that is protected by an action for passing off is not property in a word or name (which third parties are prevented from being able to use), but the customer base that was undermined by the usage of the mark in question.

• A sign which is used to designate goods or services may have acquired a suitable reputation for the purposes of the laws relating to actions for passing off, despite it originally having had a descriptive character or being devoid of distinctive character. In this case, it was found that the Board of Appeal had failed to consider the reference made by Article 8(4) of the Regulation to the law of the UK, which was applicable to the earlier non-registered mark ‘LASTMINUTE.COM’ as used by the applicant in the course of trade at the time when the application for a Community trade mark had been filed.
• Any misrepresentation by a defendant in a passing off action, whether or not it was intentional, should be deemed a representation which is likely to lead the claimant's customers to attribute to the claimant the commercial origin of the goods and services offered by the defendant. Accordingly it was held that the existence of a likelihood of confusion was therefore a condition that was common to Article 8(1)(b) of the Regulation and the action for passing off. It was deemed to be expressly provided for by Article 8(1)(b) of the Regulation and considered to be inherent in the condition of misrepresentation of the goods and services in question during the action for passing off.

• The Board of Appeal simply made a formal comparison of the two signs at issue. Accordingly, the possible existence of an independent reputation for the expression 'last minute' in the minds of the applicant's customers was not taken into consideration. This meant that it could not have been ruled out that the UK public could have believed that the goods and services offered by the proprietor of the trade mark ‘LAST MINUTE TOUR’ actually originated from the proprietor of the earlier non-registered mark ‘LASTMINUTE.COM’. This meant that the Board of Appeal had disregarded the reference in Article 8(4) of the Regulation applicable to that mark as used by the applicant in its course of trade at the time when the application for a Community trade mark was filed.

Therefore, the plea which was based on the incorrect application of Article 8(4) of the Regulation had to be upheld, and accordingly, the Contested Decisions were annulled. This meant that ‘LAST MINUTE TOUR’ could remain registered in respect of class 16, class 39 and class 42.

If you require further information contact us at [email protected]

Visit http://www.rtcoopersiplaw.com or http://www.rtcoopers.com/practice_intellectualproperty.php

© RT COOPERS, 2009. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.