General Court provides useful guidance regarding concept of 'family' of marks

In IG Communications Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-301/09, September 26 2012), the General Court has confirmed the existence of a family of CITI trademarks. The judgment, which concerned the trademark CITIGATE, may have put an end to a dispute which has lasted for over 10 years.

In January 2001 IG Communications Ltd filed a Community trademark application for the mark CITIGATE for various goods and services. After publication, the application was opposed by Citigroup Inc and Citibank NA based on various earlier trademarks, including CITI, CITICORP, CITIGROUP, CITIBOND, CITIEQUITY, CITICARD and CITIGOLD. The opposition was rejected by the Opposition Division of OHIM. The decision of the Opposition Division was subsequently reversed by the First Board of Appeal of OHIM, which upheld the opposition.

IG Communications brought the matter before the General Court. It claimed that the court should annul the board’s decision based on three pleas in law:

• the non-existence of a family of CITI trademarks;
• breach of Article 8(1)(b) of the Community Trademark Regulation (207/2009); and
• breach of Article 8(5) of the regulation.

With regard to the first plea, the court held that Citigroup and Citibank had provided sufficient proof of widespread use of the CITIBANK mark, as well as use of the CITICARD and CITIGOLD marks, among others. CITIBANK was considered to be a "house mark" with a series of sub-brands based on the 'citi' concept, thereby creating a family of CITI trademarks. The court stated that, in order to prove the existence of a family of trademarks, it was irrelevant whether it could be demonstrated that the earlier marks had a reputation. Accordingly, the first plea was dismissed.

The second plea related to the alleged likelihood of confusion. The court reiterated that a global assessment of the likelihood of confusion must be made based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The court found that the element 'citi' had a highly distinctive character. It concluded that the marks at issue were highly similar overall, as they were visually and aurally similar to at least an average degree, and conceptually highly similar.

The court further found that the goods and services covered by the marks were identical or similar, and, accordingly, there was a likelihood of confusion under Article 8(1)(b) of the regulation.

The court also dismissed the third plea, thus rejecting the action in its entirety. The court stated that it was not necessary to assess whether all the earlier marks had a reputation. For Article 8(5) of the regulation to apply, it would be sufficient that at least one of the marks satisfied the conditions.

The parties had agreed that the mark CITIBANK enjoyed a reputation in the European Union. The court held that the relevant public would be likely to think that the CITIGATE mark was a new mark belonging to the CITI family of trademarks. Interesting, the court observed that the existence of a family of trademarks increases the distinctive character of the marks belonging to that family. The CITIGATE mark was thus found to take unfair advantage of the reputation of the CITIBANK mark.

This decision provides useful guidance regarding the concept of a 'family' of trademarks and the implications of the existence of a family of marks for the distinctive character of the marks involved. The decision may well be a forerunner to further argumentation regarding families of trademarks in future cases.

Lisbet Andersen, Bech-Bruun, Copenhagen