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LastMinute.com wins right to block last minute trade mark

Court of first instance' last minute ruling

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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

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

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