‘Family of Trade Marks’ Argument Prevents New Trade Mark Registration

August 7, 2013

‘Family of Trade Marks’ Argument Prevents New Trade Mark Registration

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.