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Thursday, 22 March 2012

VW GTi OHIM CTM opposition: General Court confirms initial ruling

The decision of the General Court (European Union) yesterday in Case T-63/09 Volkswagen v OHIM - Suzuki Motor (SWIFT GTi) is only available in French and German, but the court considered so important that it merited its very own media release on Curia:

Volkswagen cannot oppose the registration of the Community trade mark SWIFT GTi applied for by Suzuki

The General Court confirms OHIM’s decision that there is no likelihood of confusion between that trade mark and the earlier trade marks ‘GTI’ held by Volkswagen
A Suzuki Swift
... In October 2003, Japanese car manufacturer Suzuki applied to the Office for Harmonisation in the Internal Market (OHIM) for registration of the word sign SWIFT GTi as a Community trade mark for motor vehicles, their parts and accessories. Volkswagen is the proprietor of the German word mark GTI and the international mark GTI - which has effect in Sweden, the Benelux, France, Italy and Austria, among others – for motor vehicles and their parts. Volkswagen opposed Suzuki’s application, claiming that there was a likelihood of confusion.

OHIM dismissed that opposition, holding that there was no likelihood of confusion. Any similarity between those marks in view of the combination of the letters ‘gti’, intuitively perceived as referring to certain technical characteristics of a car or its engine, would be largely if not entirely countered by the fanciful model name SWIFT appearing in the initial part of the mark applied for. In its judgment delivered today, the General Court confirms that analysis and dismisses the action brought by Volkswagen against OHIM’s decision.

Rover GTI, circa 1997
The General Court finds that OHIM did nor err in holding that the combination of the letters ‘gti’ would be perceived by professionals in the motor vehicle industry as a descriptive indication and that it had only an extremely low degree of inherent distinctiveness for the general public. In that regard, OHIM had taken particular account of the widespread use of the initials GTI by numerous car manufacturers throughout Europe (such as Rover, Nissan, Mitsubishi, Peugeot, Suzuki and Toyota) to indicate the technical characteristics of certain models and the existence of other marks containing the initials GTI (for example ‘Peugeot GTI’ or ‘Citro├źn GTI’). Moreover, OHIM was right to find that the word SWIFT, perceived as fanciful and positioned in the initial part of the mark applied for, was its most distinctive element.

Consequently, the General Court rules that OHIM was right to conclude that any visual, phonetic or conceptual similarity between the marks at issue was largely compensated or even entirely countered by the model name SWIFT. Similarly, OHIM correctly held that the average consumer in Sweden, the Benelux, Germany, France, Italy and Austria would not assume that all vehicles, parts and accessories come from the same manufacturer simply on the basis of the combination of the three letters ‘gti’ and accordingly any likelihood of confusion was excluded".
So far as this Kat can tell, there were no legal landmarks in this ruling; it looks as though it is just a routine, humdrum, tick-the-box exercise in which the General Court looked at the basis for the Board of Appeal's decision, checked that it was in good order so far as it applied the right law in the right way to the relevant facts, then upheld it.

GTi, circa 2012
So why pick on this decision for press release treatment? After all, media releases are usually reserved for decisions of the General Court's superior chamber, the Court of Justice -- and there are hundreds of General Court decisions each year in Community trade mark appeals (the previous General Court ruling to receive the same treatment was Case T-332/10 Viaguara v OHIM nearly two months ago). Could it be that the message that Curia is sending out is this: "while you are perfectly entitled to do so -- and it doesn't cost that much to do so either -- don't waste our time and resources by continuing to appeal futile causes?"

Merpel wonders what the story is with SWIFT GTi.  "Swift" means "fast"; "g" and "t" are "gin" and "tonic" -- but "i"? Must be a reference to "ice". Come to think of it, given the meaning of "swift" as fast, if the SWIFT GTi isn't actually swift, might the mark be deceptive ...?

5 comments:

Filemot said...

It would seem to be quite important because it is tantamount to admitting that the GTI trademark is invalid and devoid of distinctive character all within an opposition decision, where the earlier right is supposed to be presumed valid - one and two letter marks have had this treatment

Anonymous said...

Has the General Court any idea of how valuable a snappy short REGISTERED! trademark such as GTI is, or rather, was?

Moreover, until now, if people referred to a GTI, they rarely (at least in a large parts of Europe) meant anything other than a VW - Golf/Polo/Lupo - GTI without having to spell it out. It is surely beyond any doubt that this decision significantly waters down the exclusivity (and hence the value) of the mark GTI.

Assuming for the moment that Suzuki has registered trademarks for its Swift model, how would the court decide if VW applied for the trademark "VW Swift" for some ugly van? After all, swift is only a description for something quick, and, surely, any confusion with the Suzuki Swift "would be largely if not entirely countered by the fanciful name" VW " appearing in the initial part of the mark applied for"???

And on the basis of the judgement, Suzuki would almost have to succeed were they to try to register "Suzuki Volkswagen" on the basis that Volkswagen merely means people's car,which
"would be largely if not entirely countered by the fanciful name Suzuki appearing in the initial part of the mark applied for"!

Dave said...

Re anonymous at 3:27...

I disagree that "GTI" is inherently associated only with VW.

GTI is used generically to refer to hot models of standard cars, and has been for many years. The Peugeot 205 GTI is equally referenced as a GTI, and many other brands have used the lettering GTI to denote a hot model (incidentally, it derives from "Gran turismo" (grand tourer): a phrase to indicate large sporting cars capable of touring the continent at speed and in comfort. The "i" denoted that the car has a fuel-injection system.)

It was first used on the Maserati 3500 GTi in 1961, predating the VW Golf by some considerable margin.

Good to see that its appropriation as a brand is being reversed. Can we do the same for Jeep now please?!

Anonymous said...

Moreover, until now, if people referred to a GTI, they rarely (at least in a large parts of Europe) meant anything other than a VW - Golf/Polo/Lupo - GTI without having to spell it out.

Not really. Even in the heyday of the Golf GTI, back in the 1980s, its arch-competitor the Peugeot 205 GTi was sold in large numbers, including in Germany.

Anonymous said...

"So what are you driving these days Rupert?"
"A GTi, Tarquin"
"Golf or the latest 205?"
"Neither, a Lupo!
Cue Tarquin rolling about the floor in fits of laughter.

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