After numerous oppositions, appeals and cross appeals over two competitors’ attempts to register their travel services brands, the EU trade mark “Court of First Instance” annulled decisions dismissing an appeal against a part acceptance and part rejection of Lastminute’s opposition. Come again? Mark Smith reports.
Topic: Trade marks
Who: Last Minute Network Ltd v. Office for Harmonisation in the Internal Market
When: 11 June 2009
Where: Court of First Instance of the European Communities
Law stated as at: 30 October 2009
The Court of First Instance of the European Communities has annulled an Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”) decision to confirm the registration of a Community trade mark ("CTM") consisting of the words “last minute tour” together with a logo.
This followed a challenge by Last Minute Network (“LMN”), the proprietor of the well-known website lastminute.com. LMN had claimed that the "LAST MINUTE TOUR" mark infringed its unregistered trade mark rights, by being a "passing off".
In February 2000 LMN filed an application with OHIM for registration of the word mark “LASTMINUTE.COM” as a CTM in classes 39 and 42. The application was refused by the Examiner on the ground that, at that time at least, “LASTMINUTECOM” was devoid of any distinctive character.
In March 2000 Last Minute Tours (“LMT”) filed an application with OHIM for the registration of a figurative CTM consisting of the words “LAST MINUTE TOUR” together with a logo in classes 16, 39 and 42. LMN opposed the application on the basis of the existence of the unregistered word mark “LASTMINUTE.COM” in the UK. OHIM rejected this opposition and no doubt to the disbelief of LMN, the "LAST MINUTE TOUR" CTM was eventually registered in May 2003.
Lastminute.com fight back
LMN was not going to lie down on this. It filed an application for a declaration that the CTM “LAST MINUTE TOUR” was invalid. LMN relied on the provisions of Articles 8(4) and 52(1)(c) of Regulation 40/94. These state that the proprietor of an unregistered national trade mark may obtain the cancellation of a CTM if under national law he would be able to prohibit the use of such a mark.
LMN asserted that it had unregistered trade mark rights in the mark “LASTMINUTE.COM,” which it could rely on to prohibit use of the “LAST MINUTE TOUR” mark in the UK under the common law tort of passing off. The LMN application was upheld by OHIM’s Cancellation Division in relation to classes 39 (transport and travel services) and 42 (scientific and technological services), but not class 16 (printed matter etc). LMT sought an annulment of the decision in relation to classes 39 and 42, while LMN sought an annulment of the decision in relation to class 16.
Appeal verdict favours LAST MINUTE TOUR
In February 2007 the Second Board of Appeal of OHIM decided in favour of LMT, annulling the decision to grant a declaration of invalidity with regard to classes 39 and 42 and upholding the refusal to grant a declaration of invalidity with regard to class 16. The Board took the view that the relevant public was the average UK consumer and that when such a consumer saw the “LAST MINUTE TOUR” mark they would think that the undertaking using the mark offered “last minute” holidays, without associating those offers with the proprietor of lastminute.com.
The Appeal Board also held that LMN’s reputation was associated with “lastminute.com” as a whole and not in the generic term “last minute”. Furthermore, as the distinctive character of the marks was very limited, consumers would focus their attention on those elements that were distinctive, most notably the extension “.com” in “LASTMINUTE.COM” and the graphic element of the “LAST MINUTE TOUR” mark.
LMN appeals again
Undaunted by this setback, LMN appealed OHIM's decision to the Court of First Instance. The appeal was successful.
The Court of First Instance annulled OHIM’s ruling against lastminute.com on several grounds:
(1) OHIM had incorrectly defined the relevant public, which should have been the customers of lastminute.com, rather than the average UK consumer. In an action for passing off the misrepresentation of the goods and services by the defendant had to be decided with regard to the claimant’s customers;
(2) OHIM was wrong to discount the possibility that the words “last minute” might have an independent reputation despite its ostensibly generic nature. It was evident from case law that an unregistered mark could be protected by the law of passing off by acquiring an independent reputation through use, even if the mark was on the face of it descriptive or devoid of distinctive character; and
(3) OHIM had erred by concluding that there was no likelihood of confusion between the marks solely on the basis of a comparative examination of them, rather than taking into account other factors relevant to passing off such as the circumstances in which goods were offered for sale in the UK under the “LAST MINUTE TOUR” mark on the application date of the Community trade mark or the reputation of “LASTMINUTE.COM”.
Why this matters:
The result of the Court of First Instance’s decision is that LMN gets another chance to persuade the court to cancel the LAST MINUTE TOUR CTM. OHIM must re-examine LMN’s case against LAST MINUTE TOUR, taking into account fully all of the requirements of an action for passing off under UK law.
The case serves as a potent reminder of OHIM’s obligations to properly take national law into account when dealing with applications under Regulation 8(4) and the impact that national law can therefore have on Community trade mark registrations.
The full case designation is:
Last Minute Network Ltd v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-114/07 & T-115/07).