General Court considers surprising pleas under ECHR

In Metropolis Inmobiliarias y Restauraciones SL v Office for Harmonisation in the Internal Market (OHIM) (Case T-284/11, April 25 2013), the General Court has considered interesting pleas in law in a case involving the trademarks METRO and METROINVEST.

On July 30 2008 Metropolis Inmobiliarias y Restauraciones SL filed an application for the registration of the word mark METROINVEST (No 7112113). The application was opposed by MIP Metro Group Intellectual Property GmbH & Co KG (MIP) on the basis of:

• the German figurative mark No 30348717:
  
  


• Community trademark (CTM) application No 779116:
  
  

In view of the oppositions filed against the aforementioned CTM, this mark is not yet registered, so both OHIM and the General Court considered only the registered German figurative trademark. Consequently, the market to be considered was the German market.

The services involved were those in Class 36 of the Nice Classification; while these services were formulated differently in the description of the marks, they were established to be similar.

The interesting aspect of this case is that, in German, 'metro' refers to an underground railway system, whereas the word 'invest' cannot be found in any dictionary. On the other hand, the element 'invest' will be easily associated with the German word 'investieren' ('to invest'), so the General Court correctly concluded that a German-speaking consumer would perceive this element as being descriptive. The element 'metro' does not suggest any meaning to the average German consumer in connection with services in Class 36.

The Board of Appeal had held that average German consumers, as well as professionals, will have a level of attention higher than normal in connection with services in Class 36. The General Court again emphasised the principle that consumers will normally attach more importance to the first part of a word mark. As a result, the relevant public would not consider the element 'invest' to be the distinctive and dominant element of the overall impression conveyed by the mark; rather, they would consider the element 'metro' to be the distinctive and dominant element of the overall impression, so that more attention would be paid to that element. The court specifically rejected MIP's suggestion that the word 'metro' would make the German public think of an underground railway system, which has nothing to do with services in Class 36.

The fact that the trademark METROINVEST was filed in standard block letters, while MIP's German trademark consisted of yellow letters on a blue background, was considered to be negligible; the fact that the METROINVEST mark was in standard letters and the METRO mark was in a slightly different typeface was also considered to be negligible.

Metropolis also argued that there was no similarity between the services covered by the three trademarks, but did not supply any reasons for this suggestion. It was thus held that Metropolis had failed to satisfy the requirements of Article 44(1) of the Rules of Procedure, and the claim was held to be inadmissible.

Metropolis' further arguments under the European Convention for the Protection of Human Rights and Fundamental Freedoms (ECHR) are surprising. Metropolis alleged that the Board of Appeal had failed to state reasons under Article 6 of the ECHR and had violated the principle of equal treatment under Article 14. In particular, Metropolis claimed that the board had held that the word 'invest' was descriptive and that the word 'metro' was fanciful, even though the word 'invest' cannot be found in German dictionaries and the word 'metro' describes an underground railway system in the German language. The General Court held that the obligation to state reasons, while being an essential procedural requirement, has nothing to do with the issue of whether the reasons given are correct or not.

With regard to the principle of equal treatment under Article 14, Metropolis argued that, in previous cases, OHIM had rejected oppositions against the registration of marks including the word 'metro'. The General Court held that this had nothing to do with equal treatment, but concerned the principle of legality, under which nobody may rely, in support of his/her claim, on an (allegedly) unlawful act committed in another procedure.

As a result, the General Court dismissed Metropolis' action in its entirety.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna