Friday, 12 June 2009 v Last Minute Tour

In the good old days, people traded under their own names and their customers came to them because of the reputation they had acquired. Then traders sought the protection of limited companies, usually incorporating the company under a name sufficiently close to their own name that the goodwill passed effortlessly to the incorporated business. Then people started thinking up fanciful names for their businesses or their products, and finally they stopped bothering to exercise any imagination at all and started using the most descriptive names they could get away with.

I might be overstating the case - a little. And it is certainly true that these tendencies have been going on in parallel. It is however undeniable that there an awful lot of trade marks around that are not as inherently distinctive as they might be.

Distinctiveness is of the essence of a trade mark, of course, and descriptiveness is the enemy of a trade mark, though one that can be defeated. The tendency to use descriptive trade marks and therefore enclose parts of the great common of the English language is one aspect of that IP absolutism that I have criticised before - the desire to arrogate to oneself every little thing that could possibly be considered one's intellectual property, and to make it exclusive if at all possible. For this reason, among others, I believe it is time we stopped talking too freely about "intellectual property".

Moving on to what this post was supposed to be about, is a paradigm case of such a business name. It is also a great example of how the Internet has encouraged people to adopt trading names (and then domain names basedon them) that tell you about the business rather than about who operates it. Nevertheless, it is trite to say that even a descriptive name can acquire distinctiveness or a secondary meaning for trade mark purposes, and that for the purposes of the law of passing off a trade reputation can attach to such a name. has been a major part of the commercial scne in the UK for long enough that it would be hard to imagine these conditions not being met - although it failed to obtain a CTM back in February 2000 (and I wonder whether it has tried again since?).

So, when another company applied to register Last Minute Tour as a CTM, coincidentally in March 2000, opposed. However, they failed to file the necessary proof of use of their mark and the opposition failed, leaving them to initiate cancellation proceedings instead. Thelack of a registerd trade mark did not matter, because the Community trade marks regulation specifically recognises common law rights under English law. The cancellation division of OHIM agreed with as far as two of the classes in which the trade mark was registered were concerned but not on class 16, so both parties had something to appeal about, which they did. OHIM's Board of Appeal allowd Last Minute Tour's appeal and rejected's, so it was off the Court of First Instance for a further appeal.

The court's judgment was handed down yesterday. It considered that OHIM had wrongly identified the body of people whose perceptions of tha two names had to be considered. OHIM's take on what was the public in this case was average consumers of the goods and services residing in the UK and who are reasonably well informed and reasonably observant and circumspect. (They would probably be unable to tell you much about a set of loft stairs that they had just seen, I suppose, but that's by the way.) This abstract notion was wrong, the court said: it was the claimant's customers' perception that mattered.

The court also held that the Board of Appeal had erred when it considerd whether could have common law rights in its name. It had, the court said, looked at it outside the factual context - it could not "refuse to attribute to the expression "last minute" an independent reputation solely because of its generic character and its absence of distinctive charcter in relation to the services at issue and the complementary goods". Encouraging words for the absolutists, perhaps, but also recognition of how reputations can attach to inherently non-distinctive names.

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