‘Fair’ specification of goods considered in revocation proceedings

In MIP Metro Group Intellectual Property Gmbh & Co Kg v Metro Industries Limited, the hearing officer has rejected an application for revocation of the trademark METRO in respect of certain goods in Class 6 of the Nice Classification, but granted the application in respect of certain goods in Class 10.
Metro Industries Limited (the proprietor) was the registered owner of four registrations (Registration 177062, 177063, 177064 and 177065) for the trademark METRO (each being registered separately for goods in Class 6, 10, 12 and 20, respectively). These four registrations were merged into one on January 19 2011 (ie, after the date of the applications for revocation).
On December 23 2009 MIP Metro Group Intellectual Property GmbH & Co KG (the applicant) applied for revocation of Registrations 177062 and 177063 on the basis that investigations conducted on its behalf had failed to establish any use of the marks in Class 6 in respect of “ironmongery; small items of metal hardware” and in Class 10 in respect of “medical and surgical apparatus” within the period of five years following the date of publication of the registration or for a continuous period of five years.   
The proprietor filed notices of opposition, together with evidence of its use of the mark by way of statutory declarations. The statutory declarations contained details of sales figures for products bearing the METRO mark in the state for the years 2005 to 2008, and a list of products bearing the METRO mark sold in Ireland for the years 2004 to 2009. No further evidence, statements or counterstatements were filed.
With regard to the Class 10 goods, the proprietor claimed that the merger of the trademark registrations into Registration 177062 and the resultant removal of Registration 177063 from the Trademark Register rendered the application for revocation in respect of “medical, surgical apparatus” fatal, as there was no legislative provisions which permits the controller to transfer an application for revocation from a removed registration to a live registration. The applicant argued that the absence of any direct provisions in the legislation did not prevent the controller from bringing common sense and fairness into play, and did not mean that the application for revocation could not follow the registration.
The hearing officer opined that this issue, though novel, required little consideration. He stated:
The fact that a particular number, assigned to the mark for purely administrative purposes, is changed for the sake of expediency by the controller whilst carrying out an administrative procedure (in this case a merger) cannot in any way render an attack on it fatal. The status of 'removed' as recorded on the register in this case, being the result of a merger, is, in reality, in respect of the removal of the administrative number from the register, not the removal of the proprietor’s trademark rights from the register. While the original number is removed, the proprietor’s rights were not removed, but continued to exist and were merely transferred to, and merged with, those of another mark, albeit now recorded under a different number... In equity, it must be held that any action by a third party initiated against those rights must also be transferred to the new number”.
The hearing officer decided to grant the application in respect of “medical, surgical apparatus” in Class 10 and revoke the registration of the mark in respect of these goods. He noted that there was evidence of use of the marks in relation to “inhalation therapy carts”, but while he acknowledged that the carts are used in a hospital setting, they are no more than a trolley used to store or transport cylinders of gas and would perform the same function in any industry or environment. Therefore, they could not be described fairly as a medical or surgical apparatus. As the terms “parts and fittings for medical, surgical apparatus” were not attacked in the application for revocation, the hearing officer permitted these goods to remain intact. He stated that there is an absolute onus on the applicant for revocation to ensure that its application for partial revocation is clearly defined and precise in terms of the goods being attacked.
With regard to Class 6, the applicant claimed that the goods in respect of which the application for revocation was made were extremely broad descriptions and cover a huge range of items. The hearing officer stated that it is not necessary for an undertaking to have to prove use of a trademark in relation to all possible goods falling with the general definition of a specification of a mark in order to maintain the registration. In this regard, he referred to the decisions of the Court of First Instance in ALADIN (Case T-126/03) and RESPICUR (Case T-256/04).

The hearing officer also approved the principles which have resulted from a number of UK decisions as a sound basis to decide the current matter. The principles enunciated in the various UK decisions are as follows:

"(1) The tribunal’s first task is to find as a fact what goods or services there has been genuine use of the trade mark in relation to during the relevant period.
(2) Next the tribunal must arrive at a fair specification having regard to the use made.
(3) In arriving at a fair specification, the tribunal is not constrained by the existing wording of the specification of the goods or service, and in particular is not constrained to adopt a blue-pencil approach to that wording.
(4) In arriving at a fair specification, the tribunal should strike a balance between the respective interests of the proprietor, other traders and the public having regard to the protection afforded by a registered trademark.
(5) In order to decide what is a fair specification, the tribunal should inform itself about the relevant trade and then decide how the average consumer would fairly describe the goods or services in relation to which the trademark has been used.
(6) In deciding what is a fair description, the average consumer must be taken to know the purpose of that description.
(7) What is a fair description will depend on the nature of the goods, the circumstances of the trade and the breadth of use proved.
(8) The exercise of framing a fair specification is a value judgment

In applying these principles, the hearing officer rejected the application for revocation in Class 6, as he was satisfied that the average consumer of the proprietor’s goods traded under the METRO mark and protected in Class 6 would define reasonably such goods as falling within the definition 'ironmongery' or 'small items of metal hardware'.

The hearing officer stated as follows:

[I]n my opinion, goods bearing a trademark do not have to have their classification restricted so that they are referred to in one, and only one, category of terms, or sub-category of terms or a single term. While the marketplace must be protected by not allowing unjustifiable broad specifications to remain on the register, it cannot be the case that specification must be so narrow to deny protection for similar goods. What is important is that the specification is such that the average consumer would deem it fair for the goods or services traded.”

Colette Brady, DFMG Solicitors, Dublin

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