Metro International partially successful in opposition against METRO GROUP


In MIP METRO Group Intellectual Property GmbH & Co KG v Metro International SA (December 23 2014), the hearing officer has partially upheld an opposition against the registration of the mark METRO GROUP.

On July 26 2004 MIP METRO Group Intellectual Property GmbH & Co KG applied to register the following trademark in Classes 1 to 5, 7 to 9, 11, 13 to 19 and 22 to 45 of the Nice Classification:

The application was opposed in Classes 16, 25, 38 and 41 by Metro International SA on the basis of its prior registration in Class 16 for the following mark:

At the hearing, the opponent confined its opposition to the services applied for in Class 35, namely:

“advertising, marketing, advice on marketing and purchasing, market research and market analysis, public relations; management; business administration; advice on business, organisational, personnel and company economics; office work.”

It also confined its grounds of opposition to Section 10(2)(b) of the Trademarks Act 1996. The hearing officer noted that, in order for an opposition under Section 10(2) to be successful, four requirements needed to be met:

  1. there must be “an earlier trademark”;
  2. the mark applied for must be identical with, or similar to, that earlier trademark;
  3. the goods/services of the application must be identical with, or similar to, those in respect of which the earlier trademark is protected;
  4. there must be a resultant likelihood of confusion on behalf of the public.

The first requirement was satisfied as the opponent’s mark predated the filing of the application.

In relation to the second criterion, the hearing officer noted the opponent’s arguments that both marks were dominated by the word 'metro', that the human eye was inevitably drawn towards this element and that there was an obvious aural similarity between the marks. The opponent also argued that the word 'group' in the applicant’s mark merely referred to a collection of corporate entities operating under a single ownership or control and did not contribute any distinctiveness.

The hearing officer held that the marks were highly similar, both visually and aurally, and were similar conceptually. He acknowledged that in these proceedings the 'group' element of the applicant’s mark did not serve to put distance between the two marks.

In relation to the third criterion, the hearing officer was satisfied that the provision of services in relation to “market research and market analysis, public relations; management; business administration; advice on business, organisational, personnel and company economics; office work” were “totally dissimilar for the purposes of Section 10(2)(b)”. He was also satisfied that “marketing, advice on marketing and purchasing” services were not necessarily connected in trade with the opponent’s goods. Although the hearing officer acknowledged that there was “some connection between advertising papers and marketing”, he was of the view that it would be “too simplistic to bundle them together under the same banner”. This left the term 'advertising', which the hearing officer did find was similar to the opponent’s “advertising papers”.

The hearing officer noted that he was required to make an overall assessment of the likelihood of confusion that may exist between the marks. He noted that:

“the consumers of the opponent’s and the applicant’s goods and services are fellow businesses… if they purchased the opponent’s advertising papers under the opponent’s METRO trademark, there is the likelihood, that having encountered the applicant’s METRO GROUP trademark in the delivery of advertising services, they would, in my opinion, be likely to believe the two trademarks were economically linked”.

He agreed that “the 'group' element of the applicant’s mark conveys a loud and clear message that all marks bearing the word 'metro' belong to, or are associated with, the METRO Group of companies.”

Accordingly, the opposition was allowed in relation to “advertising” services in Class 35 only.

Ciaran O’Neill, DFMG Solicitors, Dublin

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