JUDGMENT OF THE COURT OF FIRST INSTANCE (Seventh Chamber)

11 June 2009 ( *1 )

‛Community trade mark — Cancellation proceedings — Community figurative mark LAST MINUTE TOUR — Earlier unregistered national mark LASTMINUTE.COM — Relative ground for refusal — Reference to the national law governing the earlier mark — Action for passing off — Article 8(4) and Article 52(1)(c) of Regulation (EC) No 40/94 (now Article 8(4) and Article 53(1)(c) of Regulation (EC) No 207/2009)’

In Joined Cases T-114/07 and T-115/07,

Last Minute Network Ltd, established in London (United Kingdom), represented by P. Brownlow, Solicitor, and S. Malynicz, Barrister,

applicant,

v

Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis and A. Folliard-Monguiral, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

Last Minute Tour SpA, established in Milan (Italy), represented by D. Caneva and G. Locurto, lawyers,

TWO ACTIONS brought against the Decisions of the Second Board of Appeal of OHIM of 8 February 2007 (Cases R 256/2006-2 and R 291/2006-2), concerning cancellation proceedings between Last Minute Network Ltd and Last Minute Tour SpA,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Seventh Chamber),

composed of N. J. Forwood, President, D. Šváby and L. Truchot (Rapporteur), Judges,

Registrar: N. Rosner, Administrator,

having regard to the applications lodged at the Court Registry on 13 April 2007,

having regard to the responses of OHIM lodged at the Court Registry on 20 and ,

having regard to the responses of the intervener lodged at the Court Registry on 27 July 2007,

having regard to the order for joinder of Cases T-114/07 and T-115/07, for the purposes of the oral procedure and the judgment, of 14 October 2008,

further to the hearing on 5 November 2008, which the intervener did not attend,

gives the following

Judgment

Background to the disputes

Registration procedure for the sign LASTMINUTE.COM as a Community trade mark

1 On 25 February 2000 Last Minute Network Ltd (‘LMN’ or ‘the applicant’) filed an application with the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of on the Community trade mark (OJ 2009 L 78, p. 1)), for registration of a Community trade mark relating to the word sign LASTMINUTE.COM.

2 The goods and services in respect of which registration of the sign was sought fell, inter alia, in classes 39 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: — Class 39: ‘Travel agency services; reservation services for travel; information, advisory and consultancy services relating to the aforesaid’; — Class 42: ‘Travel agency services; reservation services for restaurants; provision of facilities and equipment to enable trade via electronic means or non-electronic means; design of facilities for the searching and retrieval of information via the Internet and on-line databases including related networking systems; provision of dating/introduction services; social escorting services; provision of information via the Internet, databases or other electronic means in relation to the aforesaid; gardening services; information, advisory and consultancy services relating to the aforesaid.’

3 The application for registration was refused by decision of the examiner of 29 October 2001 on the ground that the word sign LASTMINUTE.COM was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 (now Article 7(1)(b) of Regulation No 207/2009).

4 LMN challenged that decision before OHIM, by notice of appeal lodged on 18 December 2001.

5 By decision of 8 July 2003, the Second Board of Appeal of OHIM dismissed the appeal with respect to the services concerned in class 39 and the ‘[t]ravel agency services; reservation services for restaurants’ in class 42, on the ground that LASTMINUTE.COM lacked distinctive character with respect to those services.

6 According to the Board of Appeal, any company which specialises in the reservation of ‘last minute’ holidays, entertainment or dinners has an interest in using the term ‘last minute’ to describe its services. An expression which falls so clearly in the public domain and which should remain available to all operators is not, in principle, capable of distinguishing the services of a particular undertaking.

7 The addition of the extension ‘.com’ to ‘lastminute’ and their being placed side by side without a space or a hyphen, which is frequent in English, has no distinctive quality. By merely referring to an Internet address, the ‘.com’ extension does not transform a non-distinctive term into a trade mark.

Registration procedure for the sign LAST MINUTE TOUR as a Community trade mark

8 On 11 March 2000, Last Minute Tour SpA (‘LMT’) filed with OHIM, pursuant to Regulation No 40/94, an application for registration of a Community trade mark concerning the following figurative sign, made up of three words ‘last’, ‘minute’ and ‘tour’ in black and a reproduction in red of a symbol supposed to evoke travel in old Rapa Nui language:

9 The goods and services for which registration of this sign was sought were in Class 16 and Classes 39 and 42 respectively, and corresponded with respect to each class to the following descriptions: — Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; catalogues; printed timetables; pamphlets; books; newspapers; magazines (periodicals); bookbinding material; photographs; labels; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks’; — Class 39: ‘Travel agencies and tourist offices; booking of seats for travel; travel arrangement; arranging of cruises and sightseeing; transport and escorting of travellers; air transport; hire of transport equipment; transportation information’; — Class 42: ‘Hotels, restaurants, boarding houses, holiday villages, bars, private clubs; services relating to the booking of hotels and holiday villages; computer software design; rental of computer software’.

10 The trade mark application was published in the Community Trade Marks Bulletin No 25/2001 of 19 March 2001.

11 On 19 June 2001, LMN gave notice of opposition to the registration of the sign applied for by LMT relying on the existence in the United Kingdom of the unregistered word mark LASTMINUTE.COM, which it had used in the course of trade, within the meaning of Article 8(4) of Regulation No 40/94 (now Article 8(4) of Regulation No 207/2009), since 1998.

12 The opposition was rejected by decision of 12 July 2002 of the Opposition Division of OHIM, on the ground that LMN had failed to submit, within the time-limit granted, proof of use of the earlier right relied on in support of the opposition.

13 The Community trade mark LAST MINUTE TOUR was registered on 14 May 2003 under No 1 552 231.

The cancellation procedure for the mark LAST MINUTE TOUR initiated by LMN

14 On 30 May 2003, LMN filed an application for a declaration that the Community trade mark LAST MINUTE TOUR was invalid on the basis of the combined provisions of Article 8(4) and Article 52(1)(c) of Regulation No 40/94 (now Article 53(1)(c) of Regulation No 207/2009).

15 In support of its application, LMN submitted that its earlier unregistered national mark LASTMINUTE.COM entitled it, according to the law of the United Kingdom, which applied by reason of the reference to that law in Article 8(4) of Regulation No 40/94, to prohibit the use of a more recent mark and therefore obtain its cancellation, pursuant to Article 52(1)(c) of Regulation No 40/94, for the services in classes 39 and 42 with respect to holidays, flights, accommodation, city breaks, entertainment, excursions, rentals, purchases and other leisure and travel services supplied online, and advertising and promotions and other associated materials.

16 The application for a declaration of invalidity of the Community mark was directed against all the goods and service covered by that mark, with the exception of services of computer software design and computer software rental.

17 By decision of 23 December 2005, the Cancellation Division upheld LMN’s application for a declaration of invalidity of the Community mark LAST MINUTE TOUR with respect to all the services falling within classes 39 and 42, but rejected that application with respect to the goods falling within class 16.

18 The Cancellation Division decided that, in accordance with Article 8(4) of Regulation No 40/94, LMN was the proprietor, prior to the filing of the application for the Community trade mark, of a right over the sign LASTMINUTE.COM for the services in classes 39 and 42 that was of more than mere local significance.

19 According to the law of the United Kingdom applicable to it, the sign gave LMN the right to prohibit the use of a subsequent trade mark if the three conditions for an action for passing off were satisfied, namely the reputation of the applicant’s goods (goodwill), a representation of the goods and services which is misleading in the sense that offering them under the Community trade mark LAST MINUTE TOUR might have led the relevant public to suppose that their commercial origin was with LMN (misrepresentation), and a likelihood that LMN would suffer commercial damage.

20 In that connection, the Cancellation Division first held that since 1998 LASTMINUTE.COM had acquired in the United Kingdom a reputation attested to by the company’s promotional budget, its substantial advertising investments, the number of newspaper articles concerning the Internet site ‘lastminute.com’ and the success of its flotation on the stock exchange. The Cancellation Division concluded from that evidence that LMN had acquired from the relevant public in the United Kingdom considerable goodwill associated with its sign.

21 In order to show the misrepresentation of goods and services under the sign LAST MINUTE TOUR, the Cancellation Division held that it was sufficient to show that the relevant public could have taken the view that they originated from LMN on account of the similarity of the two marks and, therefore, it was necessary to evaluate the likelihood of confusion between them.

22 Having found that the services in classes 39 and 42 designated by the two marks were identical, the Cancellation Division held that, although represented differently for each mark, the expression ‘last minute’ was their common dominant element. It concluded that there were significant visual similarities and a number of differences.

23 Phonetically, the Cancellation Division held that the two signs were identical as regards the first component, differing only with respect to their endings.

24 The Cancellation Division held that the two marks were conceptually identical since they referred to the idea of a ‘last minute’ deal, frequently used on the Internet to identify cut price offers on flights, hotel accommodation, restaurant services and concert tickets.

25 In the light of that evidence, the Cancellation Division held that there were considerable similarities between the two marks in spite of several distinguishing features. It concluded that there was a likelihood of confusion.

26 Lastly, the Cancellation Division held that as a result LMN was likely to suffer commercial damage.

27 The Cancellation Division therefore cancelled the Community trade mark LAST MINUTE TOUR with respect to all the services in classes 39 and 42, but refused LMN’s application for a declaration of invalidity for the goods in class 16 in the absence of evidence of previous use of the sign LASTMINUTE.COM in relation to those goods.

28 By notice of appeal lodged with OHIM on 15 February 2006 and registered under reference number R 256/2006-2, LMT sought the annulment of the Cancellation Division’s decision in so far as it had declared its Community trade mark invalid for the services at issue in classes 39 and 42.

29 By notice of appeal lodged on 20 February 2006 and registered under reference number R 291/2006-2, LMN sought the annulment of the Cancellation Division’s decision refusing its application for a declaration that the Community trade mark was invalid with respect to the goods in class 16.

30 By two decisions of 8 February 2007 (‘the contested decisions’), the Second Board of Appeal of OHIM, first, allowing LMT’s appeal, annulled the decision to cancel registration of LAST MINUTE TOUR for the services in classes 39 and 42 and, second, dismissing LMN’s appeal, upheld the Cancellation Division’s refusal to grant a declaration of invalidity with respect to the goods in class 16.

31 In the two contested decisions the Board of Appeal held that, having regard to the nature of the goods and services concerned and the status of the earlier sign as an unregistered United Kingdom trade mark, the public with regard to which the analysis of the likelihood of confusion was to be made was composed of average consumers of the goods and services residing in the United Kingdom who are reasonably well informed and reasonably observant and circumspect.

32 The Board of Appeal then stated that the expression ‘last minute’ was composed of two ordinary English words which are immediately understood by the relevant public. Applied to the goods and services concerned, that expression clearly and immediately indicated that they are offered on very favourable terms because they are purchased at the last minute.

33 According to the Board of Appeal, the expression ‘last minute’ was therefore descriptive and devoid of distinctive character with regard to the goods and services concerned and could be registered, pursuant to Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 7(1)(b) and (c) of Regulation No 207/2009), only on condition that it was accompanied by other figurative or verbal elements capable of conferring on it a minimum degree of distinctiveness.

34 It added that the association of three verbal elements ‘last’, ‘minute’ and ‘tour’ and its graphic element had undoubtedly enabled the Community trade mark to avoid falling within the relative grounds for refusal set out in the two abovementioned provisions, but that the proprietor of such a mark could not prevent the use of ‘last minute’ or ‘tour’ by other operators in the travel and tourism sector.

35 According to the Board of Appeal, it is important to know whether, faced with the expression ‘last minute’, the United Kingdom public would regard itself as being approached by the proprietor of the trade mark LASTMINUTE.COM or in the presence of ‘last minute’ offers from any operator in the travel and tourism sector. In any event, LMN had not established that, faced with the expression ‘last minute’, that public would immediately think that the services were offered by the proprietor of the trade mark LASTMINUTE.COM.

36 The Board of Appeal therefore held that LMN’s reputation was associated with the sign LASTMINUTE.COM, as such, with all its elements, and not with the generic term ‘last minute’. That reputation is recognised exclusively in the context of and for the purposes of an action for passing off provided for by the law of the United Kingdom and cannot be used to grant a monopoly on the term ‘last minute’, which is not distinctive as regards the goods and services concerned.

37 Since the distinctive character of the two marks is very limited, the public will concentrate its attention on their distinctive and dominant elements, namely the combination of the different words which make up the two signs, their contraction into a single word ‘lastminute’, and the presence of the extension ‘.com’ in the unregistered sign, as well as the graphic element in the Community mark.

38 The Board of Appeal added that, visually, the influence of the common elements of the two marks and of the word ‘tour’ in the comparison of the two signs is considerably reduced because of their lack of distinctive character. However, since the extension ‘.com’ and the red graphic symbol are completely different, the graphic differences of the two marks prevail over the similarities.

39 From the phonetic aspect, the Board of Appeal held that the two marks contained one identical expression ‘last minute’, and two different components ‘.com’ (‘dot com’) and ‘tour’. Having regard to the considerations relating to the distinctive character of the various components, the extension ‘.com’ enabled the two marks to be distinguished phonetically.

40 Furthermore, the impact of the expression ‘last minute’, which evokes the concept common to both marks of last minute offers, is mitigated by its descriptive character so that the direct reference to an electronic address contained in the extension ‘.com’ enables a conceptual difference to be established between the two marks.

41 In assessing the existence of a likelihood of confusion, the Board of Appeal held that, faced with LAST MINUTE TOUR and its graphic symbol, the public in the United Kingdom would think that it was a company offering ‘last minute’ holidays, without assuming that those offers came from the proprietor of the trade mark LASTMINUTE.COM. That public would pay attention to the distinctive elements of each sign in order to tell the difference with regard to all the other providers of similar services also using the expression ‘last minute’ in their offers for services.

42 The Board of Appeal inferred from those factors that, in spite of the similarity of the less distinctive elements, the two marks were not sufficiently similar overall to give rise to a likelihood of confusion, whether for the complementary services concerned or even with respect to identical services.

Forms of order sought

43 LMN claims that the Court should: — annul the contested decisions delivered in Cases R 256/2006-2 (Case T-114/07) and R 291/2006-2 (Case T-115/07); — declare the Community trade mark LAST MINUTE TOUR invalid with respect to the goods and services covered and falling in class 16 (Case T-115/07) and classes 39 and 42 (Case T-114/07); — order OHIM to pay the costs.

44 OHIM and LMT contend that the Court should: — dismiss the applications in their entirety; — order the applicant to pay the costs.

Law

45 According to Article 52(1)(c) of Regulation No 40/94, a Community trade mark is to be declared invalid on application to OHIM where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled.

46 It is clear from the combination of those two provisions that the proprietor of a non-registered trade mark or other sign used in the course of trade of more than mere local significance may obtain the cancellation of a more recent Community trade mark where and in so far as, according to the law of the Member State governing that sign, the rights over that sign were acquired before the date on which the application for the Community trade mark was filed and that sign gives its proprietor the right to prohibit the use of a subsequent mark.

47 For the purposes of the application of Article 8(4) of Regulation No 40/94, the Board of Appeal must take into consideration both the national legislation applicable by virtue of the reference made by that provision and the judicial decisions delivered in the Member State concerned. On that basis, the applicant for a declaration of invalidity must establish that the sign at issue falls within the scope of the law of the Member State relied on and that it enables the use of a subsequent mark to be prohibited (see, by analogy, Joined Cases T-53/04 to T-56/04, T-58/04 and T-59/04 Budějovický Budvar v OHIM — Anheuser-Busch (BUDWEISER) of 12 June 2007, not published in the ECR, paragraph 74).

48 In this case, it is not disputed that the law of the Member State applicable to the non-registered national trade mark is the Trade Marks Act 1994, section 5(4) of which provides: ‘A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented — (a) by virtue of any rule of law (in particular, the law of passing off) protecting a non-registered trade mark or other sign used in the course of trade …’

49 It is clear from that provision, as interpreted by the national courts (Reckitt & Coleman Products Ltd v Borden Inc. & Ors (1990) R.P.C. 341 HL), that in order to obtain the cancellation of the Community trade mark LAST MINUTE TOUR to protect its non-registered national trade mark LASTMINUTE.COM the applicant must establish, in accordance with the law on passing off laid down by the law of the United Kingdom, that the three following conditions are satisfied.

50 First, there was goodwill or reputation attached to the services offered by LMN in the mind of the relevant public by association with their get-up. In an action for passing off, that reputation must be established at the date on which the defendant began to offer his goods or services (Cadbury Schweppes v Pub Squash (1981) R.P.C. 429).

51 However, according to Article 8(4) of Regulation No 40/94 the relevant date is not that date, but the date on which the application for a Community trade mark was filed, since it requires that an applicant seeking a declaration of invalidity has acquired rights over its non-registered national mark before the date of filing, in this case 11 March 2000.

52 Second, the offering in the United Kingdom under the sign LAST MINUTE TOUR of services identical to those of LMN and of complementary goods would have constituted, on 11 March 2000, a misrepresentation, that is to say a representation likely to lead the relevant public to attribute the commercial origin of those goods and services to LMN, it being irrelevant whether or not such a misrepresentation was intentional.

53 Third, LMN is likely to suffer commercial damage as a result.

54 In this case, the identical nature of the services designated by the marks concerned is not disputed. Furthermore, as the Board of Appeal pointed out, the goods concerned, which fall within class 16, are complementary to the aforementioned services. That factor must therefore be taken into account in order to determine whether there would have been misrepresentation by LMT of the goods and services concerned in the United Kingdom under the sign LAST MINUTE TOUR at the date on which the application for the Community trade mark was filed.

55 It is clear from paragraph 31 of decision R 256/2006-2 and paragraph 32 of decision R 291/2006-2 that the non-registered national mark LASTMINUTE.COM had, as such, a reputation on the date on which the application for the Community trade mark was filed. That fact is not contested by OHIM, which admitted at the hearing that LASTMINUTE.COM had acquired a sizeable reputation in the United Kingdom.

56 In support of its action, the applicant relies on a single plea alleging infringement of Article 8(4) of Regulation No 40/94. That plea may be subdivided into three complaints relating to (i) the definition of the relevant public, (ii) the independent reputation enjoyed by the expression ‘last minute’ on the day on which the application for the Community trade mark was filed and (iii) the misleading character which, on that date, an offer for services identical to those offered by LMN and the complementary goods made in the United Kingdom under the sign LAST MINUTE TOUR might have had.

The first complaint: the definition of the relevant public

Arguments of the parties

57 The applicant criticises the Board of Appeal for classifying the relevant public as the average consumer in the United Kingdom who is reasonably well informed and reasonably observant and circumspect, rather than inquiring whether, having regard to its reputation, its customers, when faced with the sign LAST MINUTE TOUR in the United Kingdom with respect to the goods and services designated by that sign, would have been led, during the reference period, mistakenly to believe in the existence of a connection between the applicant and those goods and services.

58 OHIM, supported by LMT, replies that the goods and services concerned are not aimed at a particular type of consumer but at the general public. In practice, it is therefore irrelevant whether one or other group is classified as the relevant public and it is also impossible to distinguish them.

59 In any event, by taking account of the reputation of the earlier national sign, the Board of Appeal in fact based the comparison of the two marks concerned on the assumption that the vast majority of the relevant public were already familiar with the applicant’s earlier national mark.

Findings of the Court

60 It is clear from the national case-law that in an action for passing off the misleading nature of the representation of the defendant’s goods and services must be assessed with regard to the claimant’s customers and not to the abstract notion of the average consumer adopted by the Board of Appeal (Reckitt & Coleman Products Ltd v Borden Inc. & Ors).

61 The property protected by an action for passing off is not property in a word or name, which third parties are restrained from using, but the very customer base which is undermined by the usage in question (Parker J in Burberry v. Cording (1909) 26 R.P.C. 693), since the reputation of a trade mark is the power of attraction which brings in custom and the criterion which distinguishes an established business from a new business (IRC v Muller & Co’s Margarine (1901) A.C. 217).

62 In this case, the Board of Appeal therefore disregarded the definition of the relevant public given by the national courts, by holding that that public was composed of the average consumer of the goods and services concerned residing in the United Kingdom, reasonably well informed and reasonably observant and circumspect, whereas it should have referred to the customers of the proprietor of the non-registered national mark.

63 OHIM cannot argue that, if the goods and services concerned do not target a particular type of consumer but rather the general public, there is no reason in practice to distinguish several groups in order to identify the relevant public.

64 It is not in fact immaterial whether the relevant public is defined by reference to the average United Kingdom consumer as the Board of Appeal held and as provided for in Article 8(1)(b) of Regulation No 40/94 (now, Article 8(1)(b) of Regulation No 207/2009) or, on the other hand, by limiting that public, for the purposes of considering the action for passing off, to the customers of an undertaking which, like LMN, is in fact present in the market.

65 The risk which a consumer runs of being misled by a trade mark, which is claimed to be likely to lead him to attribute the commercial origin of the designated goods and services to the undertaking which is the proprietor of the earlier non-registered mark, is not necessarily the same where that consumer is already a customer of that undertaking.

66 Furthermore, it cannot be argued that, since it took account of the reputation of LASTMINUTE.COM, the Board of Appeal based the comparison of the two signs on the assumption that a large part of the relevant public was already familiar with the applicant’s sign. It is apparent from the contested decisions that, although it held that a reputation was associated with LASTMINUTE.COM, it concluded that there was no likelihood of confusion between the two signs at issue, without taking any account of that reputation, and merely made a simple comparison between the two signs.

67 It follows that, by taking average consumers of the goods and services concerned residing in the United Kingdom who are reasonably well informed and reasonably observant and circumspect as the relevant public, whereas in an action for passing off that public is composed solely of the claimant’s customers, the Board of Appeal disregarded the reference made by Article 8(4) of Regulation No 40/94 to the law of the United Kingdom, applicable to the earlier non-registered national trade mark LASTMINUTE.COM used by the applicant in the course of business on the date on which the application for the Community trade mark was filed.

The second complaint: refusal to recognise an independent reputation of the expression ‘last minute’

Arguments of the parties

68 The applicant criticises the Board of Appeal for having compared the two marks at issue on the basis of Article 8(1)(b) of Regulation No 40/94 instead of inquiring whether the non-registered national mark LASTMINUTE.COM gave it, under Article 8(4)(b) of Regulation No 40/94 (now, Article 8(4)(b) of Regulation No 207/2009), the right to prohibit the use of the subsequent Community trade mark and, therefore, to obtain a declaration of invalidity pursuant to Article 52(1)(c) thereof by application of United Kingdom law on passing off.

69 For that purpose, the Board of Appeal should have examined the reputation of the trade mark ‘LASTMINUTE.COM’, ‘Last Minute’ or ‘Lastminute’, during the period concerned, and should have ascertained whether one of the applicant’s average customers in the United Kingdom would have mistakenly made a connection between the applicant and LMT if he had been faced with the sign LAST MINUTE TOUR in the United Kingdom in relation to the services designated by the latter.

70 The reputation of the claimant’s mark in an action for passing off, which is the power of attraction which brings in custom, may be connected to elements of that mark which originally had a descriptive meaning if it can be shown that they have acquired by usage an independent reputation (secondary meaning), separate from that of the trade mark.

71 On account of the high level of advertising and promotion resulting from the applicant’s frequent appearance in newspapers in the United Kingdom, the average user of its Internet site ‘lastminute.com’ would have been capable, on the day on which the application for the Community trade mark was filed, of identifying the commercial origin of its services, whether offered under its non-registered mark LASTMINUTE.COM or under the terms ‘lastminute’ or ‘last minute’ used by the press in the United Kingdom to designate the applicant, as the Board of Appeal noted.

72 The applicant established before the Cancellation Division that the expression ‘last minute’ was not exclusively intended to designate a type of services, but was also used to identify the services it offers.

73 However, the Board of Appeal dismissed the distinctive character of the expression ‘last minute’ by isolating it from its factual context, instead of determining the actual extent of the applicant’s reputation.

74 Therefore, the Board of Appeal disregarded the order of 17 December 1999 by which the High Court of Justice of England and Wales temporarily restrained the defendant companies in the case Last Minute Network Ltd (company name ‘lastminute.com’) v Lastminute.com Plc and Others from carrying on any business using or referring to the company names ‘lastminute.com’, ‘lastminute.co.uk’, ‘lastminute’ and ‘last minute’ or any other word or combination of words having a misleading similarity with one of those names.

75 The Board of Appeal wrongly held that that order was not capable of demonstrating that the applicant’s mark conferred on it the right to prohibit the use of a subsequent mark in accordance with United Kingdom legislation on the ground that the High Court of Justice only granted an interim measure, without prejudging the merits, and that the injunction was issued without detailed argument.

76 The applicant submits that, on the contrary, the national court had to carry out detailed consideration of its substantive arguments before granting an injunction in its favour.

77 OHIM, supported by LMT, replies that a passing off action requires, like the application of Article 8(1)(b) of Regulation No 40/94, the existence of a likelihood of confusion, in the absence of which there cannot be either a misrepresentation of goods and services under the sign LAST MINUTE TOUR or, as a consequence, passing off.

78 The Board of Appeal rightly held that the applicant’s reputation was only attached to the sign LASTMINUTE.COM, which alone could be protected by a passing off action, and not to the generic term ‘last minute’. That expression is in fact composed of two English words immediately understood by the relevant public and indicates in a clear and direct manner that the applicant’s services are offered on very favourable terms because they are ‘last minute’ transactions.

79 It is established that the applicant has only used the sign LASTMINUTE.COM, in its entirety, as an indicator of the origin of its services and that in the vast majority of cases it is cited under the name ‘lastminute.com’.

80 However, the words ‘last’ and ‘minute’, since they are not perceived by the relevant public as an indicator of origin, retain a generic meaning, independently of the reputation acquired by the expression ‘lastminute.com’ on account of its use in the course of trade.

81 The relevant public is not confused by the signs at issue. The inclusion of the words ‘last’ and ‘minute’ in the two signs does not surprise the relevant public or give rise on its part to an association likely to lead it to attribute the two signs to the same company or to companies which are economically linked. On the contrary, that public will perceive it as the concurrent and legitimate use by commercial operators, which are unconnected to one another, of a term which describes a certain quality of the goods and services concerned.

82 In those circumstances, in the absence of any distinctive character of the words ‘last’ and ‘minute’ and taking account of the differences produced by the distinct presentation of the Community trade mark and its additional elements, there cannot be any likelihood of confusion between the two marks or, therefore, any misrepresentation of the goods and services concerned under the sign LAST MINUTE TOUR.

83 Lastly, neither OHIM nor the Court of First Instance is bound by the abovementioned order of the High Court of Justice, because the Community trade mark registration system is autonomous. Furthermore, that decision cannot constitute a valid precedent, even in the law of the United Kingdom, on account of its purely provisional nature, the fact that it was made in the absence of the defendants, its lack of reasoning and the difference in the factual background.

Findings of the Court

84 It is clear from the national case-law that a sign used to designate goods or services may have acquired a reputation on the market for the purposes of the law applicable to an action for passing off, even though it originally had a descriptive character or is devoid of distinctive character.

85 Thus it was held that the expression ‘Camel Hair’ had in the circumstances acquired an independent reputation on account of the use that the claimant had made of it as an indication of the commercial origin of its products, from then on distinguished from the goods of other undertakings, even if that expression was not capable of being registered as a trade mark (Reddaway v. Banham (1896) 13 R.P.C. 218, see also, to that effect, Cellular Clothing Co. Ltd v Maxton & Murray (1899) A.C. 326, 16, R.P.C. 397 HL).

86 Furthermore, in an action for passing off under the law of the United Kingdom, the reputation of the goods and services offered by an undertaking may originate, according to the circumstances of each particular case, not only from the reputation of a national trade mark, but also from that of its constituent elements, provided that they have acquired an independent reputation distinct from that of the mark considered as a whole.

87 In its present case, the Board of Appeal held that the ‘the reputation [was] associated with the sign LASTMINUTE.COM as such, with all its elements, but not with the generic expression “last minute”’. It added that ‘[t]hat reputation [was] recognised exclusively in the context of and for the sole purpose of applying the law of [the United Kingdom] on passing off and [could] not be used to grant a monopoly on the expression [“last minute”], which [was] devoid of distinctive character with respect to the services at issue and the complementary goods’.

88 However, in the light of the national case-law cited above, the Board of Appeal could not therefore refuse to attribute to the expression ‘last minute’ an independent reputation solely because of its generic character and its absence of distinctive character in relation to the services at issue and the complementary goods.

89 It follows that the Board of Appeal failed to have regard to the reference made by Article 8(4) of Regulation No 40/94 to the law of the United Kingdom, applicable to the earlier non-registered national mark LASTMINUTE.COM used by the applicant in the course of trade on the date on which the application for a Community trade mark was filed.

The third complaint: failure to take account of the independent reputation of the expression ‘last minute’ in order to assess misrepresentation of the goods and services at issue under the sign LAST MINUTE TOUR

Arguments of the parties

90 The applicant submits that, since the Board of Appeal failed to ascertain whether its customers were able to recognise the expression ‘last minute’ as an indicator of its services, the Board of Appeal also failed to verify whether, when faced with an offer for the goods and services at issue presented in the United Kingdom under the sign LAST MINUTE TOUR on the date on which the application for a Community trade mark was filed, those same customers would have been led to attribute to the applicant the commercial origin of those goods and services or to take the view that the applicant and LMT were economically linked.

91 OHIM submits that since the public will not perceive the expression ‘last minute’ as an indicator of origin, there can be no likelihood of confusion between the two signs nor, by extension, misrepresentation.

Findings of the Court

92 It is clear from the national case-law that misrepresentation by the defendant in an action for passing off, whether or not it is intentional, is a representation which is likely to lead the claimant’s customers to attribute to the claimant the commercial origin of the goods and services offered by the defendant (Reckitt & Coleman Products Ltd v Borden Inc. & Ors).

93 The existence of a likelihood of confusion is therefore a condition common to Article 8(1)(b) of Regulation No 40/94 and the action for passing off, expressly provided for by the former and inherent in the condition of misrepresentation of the goods and services concerned laid down by the latter.

94 However, the Board of Appeal could not, without disregarding the requirements specific to an action for passing off to which Article 8(4) of Regulation No 40/94 refers and which is applicable in the present case pursuant to Article 52(1)(c), first of all, simply hold, on the basis of Article 8(1)(b) of that regulation to which it referred in paragraphs 22 and 23 of the contested decisions, that, on account of the weak distinctive character of the two signs at issue the public would focus its attention on their distinctive and dominant elements, namely the combination of the different words in each sign, the combination into a single word of ‘lastminute’ and the element ‘.com’ in the non-registered sign, and the graphic element of the Community trade mark, in order then to make a visual, aural and conceptual comparison of those signs.

95 The examination of the existence of misrepresentation for the purposes of national law is not limited to a comparative examination of the two marks at issue, but extends to consideration 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.

96 It is true that there are difficulties in applying United Kingdom law on passing off in the context of an application for a declaration of invalidity pursuant to Article 52(1)(c) of Regulation No 40/94, as a result of the obligation laid down in Article 8(4) of Regulation No 40/94 (see paragraph 51 above) to consider the situation as it was on the date on which the application for the Community trade mark was filed and not the date on which the defendant in the passing off action began to offer the goods and services at issue.

97 The examination of the circumstances in which the goods or services concerned 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 is, by definition, impossible, since on that date LMT was not yet deemed to have begun to offer its goods and services in the United Kingdom under the sign LAST MINUTE TOUR.

98 However, that adaptation of the action for passing off, inherent in the application for a declaration of invalidity of the Community trade mark, does not dispense the Board of Appeal from applying the provisions of that regime, as required by Article 52(1)(c) and Article 8(4) of Regulation No 40/94.

99 Although it held that a considerable reputation associated with the non-registered national mark LASTMINUTE.COM existed, while denying such a reputation with respect to the expression ‘last minute’ on the ground, which was not in accordance with the law on passing off, that it was generic in nature and lacked distinctive character, the Board of Appeal found that there was no likelihood of confusion between the two signs solely on the basis of a comparative examination of them.

100 In so doing, it failed to inquire whether that finding could be affected by the existence of the reputation of the mark LASTMINUTE.COM or the reputation which might be attached to the expression ‘last minute’, since those reputations might be such as to increase the likelihood that LMN’s customers would regard goods and services deemed to be 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, as goods or services offered by LMN.

101 It follows that by merely making a formal comparison of the two signs at issue, without taking account of the possible existence of an independent reputation for the expression ‘last minute’ in the minds of LMN’s customers in order to rule out, in paragraph 40 of decision R 256/2006-2 and in paragraph 41 of decision R 291/2006-2, that the United Kingdom public might believe that the goods and services offered by the proprietor of the trade mark LAST MINUTE TOUR emanate from the proprietor of the earlier non-registered national mark LASTIMINUTE.COM, the Board of Appeal disregarded the reference in Article 8(4) of Regulation No 40/94 to the law of the United Kingdom, applicable to that mark, which was used by the applicant in the course of trade on the date on which the application for a Community trade mark was filed.

102 Therefore the plea based on the incorrect application of Article 8(4) of Regulation No 40/94 must be upheld and, accordingly, the contested decisions must be annulled.

103 It is for OHIM, in accordance with Article 63(6) of Regulation No 40/94 (now Article 65(6) of Regulation No 207/2009), to re-examine the application for a declaration that the Community trade mark LAST MINUTE TOUR is invalid in the light of all the requirements of an action for passing off, including, as appropriate, the requirement relating to the damage arising from the possibly misleading nature, in the mind of LMN’s customers, of an offer of the goods and services concerned that is deemed to be made in the United Kingdom under the sign LAST MINUTE TOUR on the date on which the application for the Community trade mark was filed.

104 There is therefore no need to adjudicate on the second head of claim.

Costs

105 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

106 Since OHIM has been unsuccessful, it must be ordered to pay its own costs and the applicant’s costs, as applied for by the applicant, and the intervener must be ordered to bear its own costs.

On those grounds, THE COURT OF FIRST INSTANCE (Seventh Chamber) hereby:

1. Annuls the decisions of the Second Board of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) of 8 February 2007 (Cases R 256/2006-2 and R 291/2006-2);

2. Declares that there is no need to adjudicate on the second head of claim of Last Minute Network Ltd;

3. Orders OHIM to pay the costs incurred by Last Minute Network;

4. Orders Last Minute Tour SpA to bear its own costs.

Forwood Šváby Truchot Delivered in open court in Luxembourg on 11 June 2009. [Signatures]

( *1 ) Language of the case: English