Last Minute Network Ltd ('LM Network') applied to
register the word LASTMINUTE.COM as a European Community trade mark
in 2000 for classes 39 and 42 of the trade marks register. Its
application failed due to lacking distinctive character. Last
Minute Tour ('LM Tour') applied to register a more
distinctive figurative sign as a European Community trade mark in
classes 16, 39 and 42. LM Network opposed LM Tour's
application, but the application was dismissed and the figurative
design was registered. LM Network then applied for the registration
of the figurative design to be declared invalid due to LM
Network's prior acquired UK rights in the unregistered trade
mark LASTMINUTE.COM. OHIM (the European Community Trade Mark
Office) upheld LM Network's application for cancellation in
classes 39 and 42 when it decided that LM Network had built up
considerable goodwill for its sign in the UK, but the cancellation
request was rejected for class 16. On appeal, OHIM's Board of
Appeal reversed the decision and sided totally with LM Tour.
The European Court of First Instance has now annulled that decision
and sent the matter back to OHIM to re-examine LM Network's
application for a declaration of invalidity. When looking at LM
Network's unregistered trade mark rights, the European bodies
should have considered all elements of passing off at English law
properly. When considering whether the opposition could succeed,
you should look at the reputation of the mark cited in the
opposition as at the date when the application to register the
trade mark was filed, as it was possible for a mark that had once
been considered to be lacking distinctiveness to have later
acquired a reputation.
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