Trade Mark Law Update: Lastminute.com in trade mark victory
Friday August 14th 2009, by Piers Strickland
The European Court of First Instance (CFI) has recently overturned a decision of the European Trade Mark Registry (OHIM) concerning rights to the trade mark LASTMINUTE.
In February 2000, Last Minute Network Ltd applied to register a Community Trade Mark for the sign LASTMINUTE.COM. UK readers will be familiar with Lastminute.com, which is one of the pioneers of e-commerce. However, OHIM refused this trade mark application, ruling that the trade mark application LASTMINUTE.COM was “devoid of distinctive character”. Last Minute Network Ltd appealed to OHIM’s Board of Appeal, but this appeal was dismissed with respect to travel services in class 39.
In March 2002, Last Minute Tour SpA applied to register a Community Trade Mark for the figurative sign for LAST MINUTE TOUR for a range of goods and services, including class 39. Inevitably, Last Minute Network Ltd opposed this Community Trade Mark application. Presumably because of not owning registered trade mark rights (for the reasons mentioned above), Last Minute Network Ltd were forced to rely on their “unregistered trade mark rights”. As a result, they cited article 8(4) of Council Regulation (EC) No. 40/94:
Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
In effect, Last Minute Network Ltd were relying on the English law of passing off. This law protects goodwill built up in the course of trade in certain circumstances. Last Minute Network Ltd’s position was that it had sufficient goodwill to entitle it to protect its unregistered trade mark (LASTMINUTE.COM) and that this goodwill existed before the LAST MINUTE TOUR application was filed and that the LASTMINUTE.COM goodwill was of more than local significance.
This dispute made its way through OHIM and to the CFI, with Last Minute Network Ltd claiming that OHIM’s Board of Appeal had not effectively taken into account the provisions of article 8(4) of Council Regulation (EC) No. 40/94.
The CFI judgment held that:
merely making a formal comparison of the two signs at issue, without taking account of the possible existence of an independent reputation for the expression ‘last minute’ in the minds of [Last Minute Network Ltd's] customers..might believe that the goods and services offered by the proprietor of the trade mark LAST MINUTE TOUR emanate from the proprietor of the earlier non-registered national mark LASTIMINUTE.COM, the Board of Appeal disregarded the reference in Article 8(4) of Regulation No 40/94 to the law of the United Kingdom, applicable to that mark, which was used by the applicant in the course of trade on the date on which the application for a Community trade mark was filed.
COMMENT: This case goes to show that a registered trade mark is not a pre-requisite to making a successful opposition to an overlapping trade mark application. Last Minute Network Ltd’s case was undoubtedly strengthened by the substantial level of goodwill which it had generated. However, the threshold for protectable goodwill is not necessarily so high and other owners of unregistered trade mark rights, such as goodwill in the UK, should bear this in mind when considering whether to try and enforce their trade mark rights, whether in trade mark opposition proceedings or in other trade mark / brand disputes.
