‘Family of Trade Marks’ Argument Prevents New Trade Mark Registration
16th January, 2013
There have been many cases over the years which deal with ‘family names’ in trade marks – ‘easyJet’ having brought some of the more memorable ones.
Recently, US banking giant Citibank opposed a registration application by an unrelated business for a Community Trade Mark (CTM) for ‘Citigate’, to be used in electronic communications, advertising, design and consultancy services. The opposition was on the ground that registration as a CTM would cause a detriment to the ‘distinctive character or repute’ of the Citibank family of trade marks. Citigroup has eleven CTMs, all beginning with ‘Citi’, in its family of trade marks, all of which were registered between 1998 and 2003.
It was also argued that the Citigate CTM would infringe those of Citibank by virtue of similarity between the services offered.
The EU General Court agreed and refused the application, concluding that ‘the concept of a family of trade marks simply allows the proprietor of such a family to demonstrate that a likelihood of confusion may be created by the possibility of association between the trade mark applied for and the earlier marks forming part of the family’ and that this had been demonstrated in this instance.
Before spending time and money on brand building and trade mark design and development, it is sensible to consider which organisations might oppose the application and on what grounds.
For any advice on trade marks or any other intellectual property matters, contact David Harries on 01244 405527 or email him at [email protected].
You might also be interested in...
22nd May, 2018
With the General Data Protection Regulation (GDPR) coming into force in May, businesses across Shropshire have been flocking to hear more about the new laws Paul Bennett, a partner at law firm Aaron & Partners LLP, has been delivering seminars in partnership with the Shropshire Chamber of Commerce An employment solicitor from Shrewsbury is urging businesses across the... Read More »
15th May, 2018
Experienced HR leader joins Aaron & Partners LLP Law firm with offices in Chester and Shrewsbury appoints Kate Robertson to drive HR strategy for more than 120 staff and to support the company’s growth Chester law firm Aaron & Partners LLP has strengthened its senior leadership team with the appointment of an experienced human resources manager. Kate Robertson... Read More »
24th April, 2018
Jan Chillery, Insolvency Partner at Aaron & Partners LLP, shares her experience and the reasons why we should be cautious before paying so-called “bailiffs” over the phone or online without vetting them first. My neighbour has told me that recently he had a CCJ (County Court Judgment) against him. A day or so later, he received a phone call... Read More »