Use of METROBUS for public transport does not infringe METRO mark

The Federal Supreme Court has held that use of the mark METROBUS by the public transport companies of the cities of Berlin, Hamburg and Munich did not infringe the registered trademark METRO (Cases I ZR 167/07,  I ZR 174/06 and I ZR 186/06, February 5 2009).
The claimant, which belongs to the Düsseldorf-based Metro Group, is the owner of the German and Community trademarks METRO and METRORAPID for transport and travel arrangement services. Furthermore, the claimant has rights in the company name Metro AG.
The three defendants - Berliner Verkehrsbetriebe (BVG), Hamburger Verkehrsverbund (HVV) and Münchner Verkehrs- und Tarifverbund (MVV) - used the term 'Metrobus' to refer to bus lines connecting underground stations to other public transport networks. The defendants registered the term 'Metrobus' together with the relevant abbreviation (ie, BVG METROBUS, HVV METROBUS and MVV METROBUS) with the German Patent and Trademark Office.
The claimant alleged that the defendants’ use of the term 'Metrobus' - by itself or together with the abbreviations 'BVG', 'HVV' or 'MVV' - infringed its rights in the trademark METRO.
Putting an end to a dispute that spanned five years, the Supreme Court held that the defendants did not infringe the claimant's trademark rights. The court agreed with the Hamburg Appeal Court and held that there was no likelihood of confusion between the mark METROBUS for public transport services and the claimant’s METRO mark.
In particular, the court found that the relevant public would not:
  • divide the METROBUS mark into its two components (ie, 'metro' and 'bus'); and
  • associate the METROBUS mark for public transport services with the Metro Group.
Consequently, the court ruled that use of the METROBUS mark did not infringe the claimant's rights in its mark or company name.
However, with regard to the use of the METROBUS mark for goods and services other than public transport (eg, calendars and magazines), the court upheld the decisions in favour of the claimant and remanded the cases to the lower courts for further determination.
Verena Wintergerst, Bardehle Pagenberg Dost Altenburg Geissler, Munich

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