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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 Field Fisher
Waterhouse
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