Advertising services are not similar to printed matter

In Metro Cash & Carry GmbH v Metro International Limited (January 6 2011), the acting controller has dismissed an opposition against the registration of the mark METRO.

Metro Cash & Carry GmbH applied to register the word mark METRO in Classes 35, 36, 37, 38, 39, 40, 41 and 42 of the Nice Classification. On advertisement, the application was opposed by Tidnings AB Metro (the predecessor in title to Metro International SA), which is the publisher and printer of the first free daily newspaper funded solely by its advertising (there are now more than 70 editions of it in 23 countries). The opponent relied on a device mark consisting of the letters 'METR' and, in place of the 'O', a device of a globe, which was registered in Class 16 in respect of "printed matter, including daily newspapers and advertising papers".

Ultimately, the opponent limited its opposition to Classes 35, 38 and 31. 
The opponent argued that the existence of its earlier mark constituted a likelihood of confusion on behalf of the public and also rendered the applicant’s mark devoid of distinctive character. The acting controller held that the opponent’s argument in this regard was unsustainable and misguided, as failure to comply with the provisions of Section 6 and Section 8(1)(b) of the Trademarks Act 1996 constitutes absolute grounds for refusing registration. Therefore, the provisions must be considered in isolation from the existence of any other trademarks, whether identical, similar or dissimilar to the mark put forward for registration. He did not accept that the applicant’s mark was incapable of identifying the applicant’s services and setting them apart from like services of other traders, and he dismissed the opposition on this ground.

He also did not accept that the applicant’s mark was devoid of any distinctive character. He held that the applicant’s mark had the capacity to distinguish based on the fact that:
  • the word 'metro' does not designate any individual service within the classes for which it was submitted for protection; and
  • the word created an overall impression that was sufficiently individual and memorable as to have the requisite capacity to distinguish the applicant’s services.
As regards Section 10(2) of the act, the acting controller held that the appreciation of the visual, aural and conceptual similarity of the marks must be based on the overall impression given by them, rather than on specific points of details that are likely to go unnoticed by the average consumer. He was of the view that the visual and aural similarity between the marks was of a high degree. He was also of the view that, conceptually, the marks shared a high level of similarity. However, he viewed the marks as not identical.
As regards a comparison of the goods and services of the respective marks, the acting controller looked firstly at Class 35 and was satisfied that most of the services for which the applicant sought protection in this class had no connection whatsoever with the goods for which the opponent’s mark was protected, which were all printed-matter based, while the applicant’s services of "radio and television advertising and cinema advertising" were sound and/or vision based. This view was also in tune with that of the Revenue Commissioners, who dictated that advertising services which include the services of production of advertising documentation are a taxable activity subject to the standard rate of value added tax (VAT), whereas newspapers and the like are goods subject to a reduced rate of VAT. The acting controller found that advertising services were not similar to printed matter. He also found that the channels of distribution were different and that there was no direct competition between the services of producing advertising documentation and free newspapers. He found that the goods protected by the opponent’s mark in Class 16 were dissimilar to the services in Class 35 for which the applicant had filed for protection.
In considering Class 38, the acting controller came to the conclusion that trading in printed matter and newspapers (whether of an advertising or news variety) was completely different to providing news agency services to those who sell news to the public. He thus held there was no similarity between the opponent’s goods and the services of providing "news agency services for press, radio and television"
Finally, the acting controller looked at Class 41 and held that all the services for which protection had been sought in the applicant’s application other than "publication of books, newspapers and periodicals" were dissimilar to the opponent’s goods. He refused to follow the Office of Harmonisation for the Internal Market's Guidelines for Opposition, which he described as being concerned with that office’s consideration of oppositions only and therefore irrelevant in these proceedings. He did find some similarity between "publication of newspapers and periodicals" and the opponent’s goods, but held that they were more dissimilar than similar.
The acting controller then considered likelihood of confusion. In this instance, in deciding who the average consumer was, he said that in trading terms he would not classify the general public as the average consumer of the opponent’s goods. The real consumers, in his view, were the traders that pay for advertisement space in the opponent’s newspapers, which, according to the evidence provided by the opponent, was its sole income stream. The average consumers of the applicant’s services are also traders. The acting controller held that there was a very low level of similarity between the goods and services. He held that the consumers of the opponent’s and the applicant’s goods and services are fellow businessman, and that they were not likely to confuse or associate both activities with the one undertaking just because they are offered under a similar mark. They would understand the difference between the economic activity that is the sale of newspapers and the economic activity of publishing newspapers for newspaper proprietors. Accordingly, there was no likelihood of confusion.

For all of the above reasons, the opposition was dismissed. 
Patricia McGovern, DFMG Solicitors, Dublin

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