Feeds

LastMinute.com wins right to block last minute trade mark

Court of first instance' last minute ruling

Top 5 reasons to deploy VMware with Tegile

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.

Intelligent flash storage arrays

More from The Register

next story
Ex-US Navy fighter pilot MIT prof: Drones beat humans - I should know
'Missy' Cummings on UAVs, smartcars and dying from boredom
Facebook, Apple: LADIES! Why not FREEZE your EGGS? It's on the company!
No biological clockwatching when you work in Silicon Valley
The 'fun-nification' of computer education – good idea?
Compulsory code schools, luvvies love it, but what about Maths and Physics?
Doctor Who's Flatline: Cool monsters, yes, but utterly limp subplots
We know what the Doctor does, stop going on about it already
'Cowardly, venomous trolls' threatened with TWO-YEAR sentences for menacing posts
UK government: 'Taking a stand against a baying cyber-mob'
Happiness economics is bollocks. Oh, UK.gov just adopted it? Er ...
Opportunity doesn't knock; it costs us instead
Sysadmin with EBOLA? Gartner's issued advice to debug your biz
Start hoarding cleaning supplies, analyst firm says, and assume your team will scatter
prev story

Whitepapers

Forging a new future with identity relationship management
Learn about ForgeRock's next generation IRM platform and how it is designed to empower CEOS's and enterprises to engage with consumers.
Cloud and hybrid-cloud data protection for VMware
Learn how quick and easy it is to configure backups and perform restores for VMware environments.
Three 1TB solid state scorchers up for grabs
Big SSDs can be expensive but think big and think free because you could be the lucky winner of one of three 1TB Samsung SSD 840 EVO drives that we’re giving away worth over £300 apiece.
Reg Reader Research: SaaS based Email and Office Productivity Tools
Read this Reg reader report which provides advice and guidance for SMBs towards the use of SaaS based email and Office productivity tools.
Security for virtualized datacentres
Legacy security solutions are inefficient due to the architectural differences between physical and virtual environments.