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Last minute reprieve for passing off

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

An Art.8(4) case from the CFI: Joined Cases T-114/07 and 115/07 Last Minute Network v OHIM - Last Minute Tour. Last Minute Tours registered a word and device mark containing the words Last Minute Tours as a CTM for Class 16 and Classes 39 and 42. Last Minute Network applied for the mark to be invalidated, citing an earlier right protected by passing off in the sign lastminute.com under Art.8(4). The OHIM Second Board of Appeal rejected the application for invalidity citing a lack of confusion.

The CFI found that the Board had erred in a number of respects:

1. The Board had looked at the average consumers of the goods in question, whereas under passing off the relevant public is the earlier user's customers;
2. The Board had wrongly addopted the approach that because the term 'last minute' had a generic meaning, no party could be granted a 'monopoly' in it. This was wrong in the light of the Camel Hair Belting case (Reddaway v Banham [I896]. A. C.. I99);
3. In establishing misrepresentation, the Board had conducted a mark for sign comparison of the two indicia, focusing on their aural, visual and conceputal aspects, as would be appropriate under Art.8(1)(b). Passing off would include a onsideration of other factors such as, in this case, the circumstances in which the goods or services are offered in the United Kingdom under the sign LAST MINUTE TOUR on the date on which the application for the Community trade mark was filed. The Board had also failed to take into account the reputation of lastminute.com in establishing passing off, and the possiblity that its reputation would lead to confusion as to the origin of services which just used the 'last minute' element.

The decision was thus annulled at sent back to OHIM for adjudication.

The IPKat notes that this case demonstrates something that is sometimes easy to forget - that the confusion required for trade mark infringement and misrepresentation under passing off don't necessarily lead to the same result. Once again though, the IPKat feels rather sorry for OHIM, having to apply the assorted unfair competition rules and other laws of 27 Member States under Art.8(4).

Full post as published by IPKat on June 16, 2009 (boomark / email).