The Court of First Instance (CFI) has annulled the Office for Harmonisation in the Internal Market‘s (“OHIM”) decision concerning the validity of the “Last Minute Tour” trade mark, following a challenge from a competitor. OHIM is responsible for managing Community trade marks.

The dispute arose in 2003 when a firm known as Last Minute Tour (LMT) obtained a European trade mark registration comprised of the name “Last Minute Tour.” A United Kingdom-based firm known as Last Minute Network (LMN), however, had previously been refused a European trade mark registration for its sign “lastminute.com” in 2000. LMN applied to OHIM to declare the mark “Last Minute Tour” invalid under the Community trade mark Regulation. LMN argued that this Regulation permits the owner of a non-registered national mark (i.e. LMN) to have cancelled a later-registered Community trade mark (i.e. “Last Minute Tour”), if national law gave the owner of the non-registered trade mark the right to prohibit use of the registered trade mark. Such a right existed, LMN argued, under the UK law of “passing off”, which can be used to enforce unregistered trade mark rights if certain criteria are met. OHIM denied LMN’s application, and LMN appealed to the CFI.

The CFI backed LMN’s arguments and annulled OHIM’s decision to deny LMN’s challenge to the “Last Minute Tour” Community mark. In particular, the CFI concluded that OHIM misinterpreted the criteria of the UK law of passing off. The CFI therefore ordered OHIM to re-examine LMN’s application to cancel LMT’s Community trade mark “Last Minute Tour.” This decision is significant because a company has essentially won the right to have a competing firm’s European trade mark cancelled on the basis of its national rights. The parties have two months to appeal to the European Court of Justice.