snIPpets – June 2012
- Volkswagen loses GTI battle with Suzuki
- CJEU confirms "date of filing" of a Community Trade Mark
- No GLEE for claimant as PCC case transferred to the High Court
- You-Q not allowed to use BEATLE mark for wheel chairs
- CJEU rules in Winstersteiger on where to bring an adwords claim
- CJEU rules that F1 mark is distinctive
- ISPs ordered to block access to Pirate Bay website
- Social networking site not obliged to install filtering system to prevent unlawful downloading
- CJEU rules on database rights in fixture lists
- BT and Talk Talk lose challenge to the Digital Economy Act
- O2 ordered to disclose customer details
- CJEU rules on the broadcasting sound recordings in hotel guest rooms
- CJEU rules on the scope of copyright protection for computer programs
- Battle of the tablets
- Court of Appeal reverses PCC decision on validity of honey wound dressing
- Defendants CellXion lose out on costs due to conduct
VW's Turbo Blow
Volkswagen AG v OHIM, Case T-63/09 (Judgment not yet available in English)
On 21 March 2012, the European General Court confirmed the Office for Harmonisation in the Internal Market ("OHIM") Board of Appeal’s decision that there is no likelihood of confusion between the Community Trade Mark SWIFT GTi applied for by the Suzuki Motor Corporation ("Suzuki") and the earlier trade marks ‘GTI’ held by Volkswagen AG ("VW").
Suzuki filed the SWIFT GTi mark in October 2003 for goods in Class 12 (cars). VW subsequently opposed claiming that there was a likelihood of confusion based on their registration in 2005 in Germany of the mark GTI also in Class 12 and an international registration in June 1999. OHIM dismissed VW's opposition stating that there was no likelihood of confusion. VW then appealed to the General Court.
The General Court held that the OHIM was correct in finding that there was no likelihood of confusion. The combination of the letters GTI would be seen by professionals in the motor industry as a description of the technical characteristics of the car or engine. The GTI letters were held not be distinctive in the general public's eyes.
OHIM referred to the fact that the GTI initials had been used by several car manufacturers throughout Europe (i.e. Mitsubishi, Nissan, Peugeot, Rover, Suzuki, Toyota) and Peugeot and Citroen's registered marks containing the GTI initials. For this reason, the strength of the mark was always going to be called into question and this was important to the outcome of the case.
Although commentators have noted that this case has not provided us with any legal landmarks, it has provided a useful example of how evidence of distinctiveness could possibly have affected the decision of OHIM. VW claimed that by 2003, the GTI mark was de facto distinctive of VW, however evidence of this was not provided. Had such evidence been provided, it is anticipated that OHIM would have had a much more difficult task to decide whether acquired distinctiveness of GTI outweighed the descriptive element which would have resulted in a greater likelihood of confusion. Commentators have also noted that had VW been more aggressive in enforcing its mark previously, then this would have possibly assisted its case.
Owain Davies, trainee, IP Protection and IP Enforcement and Litigation at Fieldfisher
Sign up to our email digest