Trademark proprietors may have several trademarks that all share some common element. These trademarks form a trademark family that may be granted protection against other trademarks that contain the same shared element.
The EU General Court has issued a ruling in the so-called CITIGATE case that further specifies which kind of protection is afforded to trademark families. The issue at the heart of the said matter was whether the applicant's CITIGATE trademark could be registered or whether a likelihood of confusion existed between it and earlier third-party trademark registrations. Financial services corporation Citigroup Inc. and its subsidiary Citibank, N.A. were the proprietors of several earlier registered trademarks that all contained the word 'citi'. The General Court ruled that e.g. trademarks CITIBANK, CITICARD, CITIGOLD, CITIEQUITY, CITIBOND and CITICORP were all members of the same trademark family.
Although the trademark applied for, CITIGATE, was not similar to any specific trademark belonging to the aforementioned trademark family, the General Court held that the CITIGATE trademark could not be registered due to the existence of a likelihood of confusion. The trademark applied for was identical in structure to the trademarks in the trademark family: each trademark contain the identical and distinctive prefix 'citi' as well as one short, monosyllabic word that acted as a less distinctive or descriptive suffix.
The element shared by all Citigroup trademarks indicates that they belong to the same trademark family. The General Court ruled that the average consumer will assume that CITIGATE is another member of the CITI trademark family, and thereby be mistaken as to the origin of the goods and services covered by the said trademark.
The General Court's ruling indicates that trademark families may be granted stronger protection when compared to a situation where two trademarks are evaluated separately. Thereby registering the names of their product lines could benefit proprietors as registering several similar names may lead to the allocation of a greater degree of trademark protection.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
