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
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| 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.
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| 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 ‘Citroën 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.
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| 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 ...?
