Feeds

LastMinute.com wins right to block last minute trade mark

Court of first instance' last minute ruling

High performance access to file storage

Online travel company LastMinute.com has won the right to have a competing firm's European trade mark cancelled. The European Union's Court of First Instance (CFI) has backed the British firm, overturning a ruling by the EU office for trade marks.

LastMinute.com objected to a European trade mark registration for the term Last Minute Tour by an unrelated company. Last Minute had itself been refused a European trade mark in 2000 because the term was said not to have distinctive character.

LastMinute.com appealed that decision and said that its UK trade mark rights were infringed by the Community Trade Mark Last Minute Tour.

The Office for Harmonisation in the Internal Market (OHIM), which rules on European trade mark disputes, had said that Last Minute Tour trade mark was not invalid because the two trade marks had different audiences.

"[OHIM ruled that] the public with regard to which the analysis of the likelihood of confusion was to be made was composed of average consumers of the goods and services residing in the United Kingdom who are reasonably well informed and reasonably observant and circumspect," said the CFI ruling.

The CFI disagreed with the basis of this decision, saying that OHIM had wrongly identified the body of people whose perceptions should be judged.

"It is clear from the national case-law that in an action for passing off the misleading nature of the representation of the defendant’s goods and services must be assessed with regard to the claimant’s customers and not to the abstract notion of the average consumer adopted by the [OHIM] Board of Appeal," it said.

"The Board of Appeal disregarded the reference made by Article 8(4) of Regulation No 40/94 to the law of the United Kingdom, applicable to the earlier non-registered national trade mark 'LastMinute.com' used by the applicant in the course of business on the date on which the application for the Community trade mark was filed," it ruled.

LastMinute.com also argued that trade marks could earn their own reputation even if they are made up of generic words, and that someone else using those words can be guilty of 'passing off' their goods or services as the trade mark owner's.

The company said that the OHIM Board of Appeal had looked at its trade mark outside of its factual context.

The CFI said that OHIM had also erred in judging this issue. "The Board of Appeal could not … refuse to attribute to the expression ‘last minute’ an independent reputation solely because of its generic character and its absence of distinctive character in relation to the services at issue and the complementary goods," it said.

The CFI annulled OHIM's decision and asked it to re-examine the case.

See: The ruling

Copyright © 2009, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

Combat fraud and increase customer satisfaction

More from The Register

next story
Putin tells Snowden: Russia conducts no US-style mass surveillance
Gov't is too broke for that, Russian prez says
Lavabit loses contempt of court appeal over protecting Snowden, customers
Judges rule complaints about government power are too little, too late
Don't let no-hire pact suit witnesses call Steve Jobs a bullyboy, plead Apple and Google
'Irrelevant' character evidence should be excluded – lawyers
EFF: Feds plan to put 52 MILLION FACES into recognition database
System would identify faces as part of biometrics collection
Edward Snowden on his Putin TV appearance: 'Why all the criticism?'
Denies Q&A cameo was meant to slam US, big-up Russia
Ex-Tony Blair adviser is new top boss at UK spy-hive GCHQ
Robert Hannigan to replace Sir Iain Lobban in the autumn
Record labels sue Pandora over vintage song royalties
Companies want payout on recordings made before 1972
Judge halts spread of zombie Nortel patents to Texas in Google trial
Epic Rockstar patent war to be waged in California
Reprieve for Weev: Court disowns AT&T hacker's conviction
Appeals court strikes down landmark sentence
German space centre endures cyber attack
Chinese code retrieved but NSA hack not ruled out
prev story

Whitepapers

SANS - Survey on application security programs
In this whitepaper learn about the state of application security programs and practices of 488 surveyed respondents, and discover how mature and effective these programs are.
Combat fraud and increase customer satisfaction
Based on their experience using HP ArcSight Enterprise Security Manager for IT security operations, Finansbank moved to HP ArcSight ESM for fraud management.
The benefits of software based PBX
Why you should break free from your proprietary PBX and how to leverage your existing server hardware.
Top three mobile application threats
Learn about three of the top mobile application security threats facing businesses today and recommendations on how to mitigate the risk.
3 Big data security analytics techniques
Applying these Big Data security analytics techniques can help you make your business safer by detecting attacks early, before significant damage is done.