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Volkswagen loses GTI battle with Suzuki

Nick Rose
06/06/2012

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United Kingdom

Volkswagen loses GTI battle with Suzuki

snIPpets – June 2012

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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").  

Facts

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.

Decision

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.

Comments

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

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