LASTMINUTE.COM gets last-minute win

European Union
In Last Minute Network Ltd v Office for Harmonization in the Internal Market (OHIM) (Joined Cases T-114/07 and T-115/07, June 11 2009), the Court of First Instance (CFI) has reversed a decision of the Second Board of Appeal of OHIM on the grounds that the latter had incorrectly applied Article 8(4) of the Community Trademark Regulation (40/94).
On February 25 2000 Last Minute Network Ltd applied for the registration of LASTMINUTE.COM as a Community trademark (CTM) for travel-related services in Classes 39 and 42 of the Nice Classification. The application was rejected on the grounds that the mark was devoid of distinctive character. Last Minute Network appealed, but the appeal was dismissed by the Second Board of Appeal of OHIM. The board stated that:

"any company which specializes in the reservation of ‘last minute’ holidays, entertainment or dinners has an interest in using the term ‘last minute’ to describe its services. An expression which falls so clearly in the public domain and which should remain available to all operators is not, in principle, capable of distinguishing the services of a particular undertaking."

Last Minute Network did not appeal the decision.
On March 11 2000 Last Minute Tour SpA filed an application for the registration of LAST MINUTE TOUR (and design) as a CTM for goods in Class 16 and for travel and lodging-related services in Classes 39 and 42. Last Minute Network opposed the application based on the existence in the United Kingdom of the unregistered mark LASTMINUTE.COM, which it used in the course of trade within the meaning of Article 8(4) of the regulation. The opposition was rejected for failure to document proof of use, and LAST MINUTE TOUR was registered on May 14 2003.

On May 30 2003 Last Minute Network filed an application for a declaration of invalidity of LAST MINUTE TOUR under Articles 8(4) and 52(1)(c) of the regulation. The application was based on Last Minute Network's unregistered rights in LASTMINUTE.COM in the United Kingdom. The Cancellation Division of OHIM, applying the UK law on passing off, ruled in favour of Last Minute Network with regard to services in Classes 39 and 42, but not with regard to goods in Class 16. Both parties appealed.
The Second Board of appeal of OHIM ruled in favour of Last Minute Tour and rejected Last Minute Network’s appeal. The board reasoned that the public in the United Kingdom, faced with the trademark LAST MINUTE TOUR and its graphic symbol, would think that it was a company offering ‘last minute’ holidays, without assuming that those offers came from the proprietor of the trademark LASTMINUTE.COM.
On appeal, the CFI reversed, finding that the board had misapplied Article 8(4) of the regulation. For Last Minute Network to succeed in an action for passing off under UK law, the following three conditions had to be met:
  • There was goodwill or reputation attached to the services offered by Last Minute Network in the mind of the relevant public by association with their get-up;
  • The offering in the United Kingdom under the mark LAST MINUTE TOUR of services identical to those of Last Minute Network and of complementary goods would have constituted a misrepresentation - that is, a representation likely to lead the relevant public to attribute the commercial origin of those goods and services to Last Minute Network; and
  • Last Minute Network was likely to suffer commercial damage as a result.
The CFI also concluded that the board had erred in classifying the relevant public as the average consumer in the United Kingdom who is reasonably well informed and reasonably observant and circumspect - it should have referred to the customers of Last Minute Network. Further, the CFI held that the board:
  • should have ascertained whether LASTMINUTE.COM had an independent reputation in the United Kingdom; and
  • had erred in determining that there was no likelihood of confusion between the two marks based solely on a comparative examination.
The decision shows that in Article 8(4) cases, OHIM must apply national rules as interpreted by national case law. 

Peter Gustav Olson, MAQS Law Firm, Copenhagen

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