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18 aprile 2008

Another dilution case bites the dust: waiting for Intelmark to be decided, the TFI rules on Citibank

Fabio Angelini

On April 16, the CFI has delivered another decision which helps to further clarify and understand the still elusive concept of dilution and how similar must two mark must be to warrant protection against dilution. In its ruling on case Case T‑181/05, Citigroup, Inc. V. OHIM, the CFI reversed the First Board of Appeal decision which had denied the applicability of art. 8(5) of Reg. 40/94 (CTMR) in the opposition which Citigroup had lodged against the CTM application CITI, in class 36 for “customs agencies, property valuers, real estate agents, evaluation and administration of house contents” and held that dilution was likely to occur.

Quick and dirty: The CFI, found that since the existence of a link must be appreciated globally, taking into account all factors relevant to the circumstances of the case, in relation to the visual, aural and conceptual similarities, the comparison of the signs must be based on the overall impression produced by the marks, taking account, inter alia, of the distinctive and domi
nant elements of those marks. At the visual and conceptual level, it is the ‘citi’ element which is the most dominant and distinctive element of the trade mark CITIBANK in that it has the effect of distinguishing the applicants’ banking activities from those of all other banks. The presence of the word element ‘citi’ in the two marks at issue thus results in their being somewhat similar. In addition, the fact that the trade mark applied for (CITI) is wholly included in the trade mark CITIBANK and that it is the first component of that mark reinforces that similarity at a visual level.

Therefore, bearing in mind, in that regard, that a likelihood of co
nfusion is not required for that purpose, the CFI held that the “similarity” so established to exist between the marks at issue was sufficient for the public to be able to establish a link between them, as is required for the application of Article 8(5) of Regulation No 40/94,

Furthemore, the CFI found that under the circumstances there was a high probability that the use of the trade mark applied for, CITI, by customs agencies, and therefore for financial agency activities in the management of money and real estate for clients, may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark CITIBANK and the considerable investments undertaken by the applicants to achieve that reputation.

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