METRO Group - 239779

• Administrative Decision Number: 239779
• opponent: METRO INTERNATIONAL S.A.
• Section: Trade Marks Act, 1996 - 2008-2017

1

DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE

MARKS IN PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

In the matter of an application for registration of Trade Mark No. 228300 and in the matter of

an Opposition thereto.

MIP METRO Group Intellectual Property GmbH & Co. KG Applicant

(Represented by Tomkins & Co.)

METRO INTERNATIONAL S.A. Opponent

(Represented by Anne Ryan & Co.)

The Application

1. On 26 July, 2004 (the “relevant date”), MIP METRO Group Intellectual Property GmbH

& Co. KG, a German company, of Metro-Strasse 1, D-40235 Dusseldorf, Germany made

application (No. 2004/01575) under Section 37 of the Trade Marks Act, 1996 (“the Act”)

to register

(the “Disputed Mark”) as a Trade Mark in respect of a wide range of goods and services

in Classes 1 to 5, 7 to 9, 11, 13 to 19 and 22 to 45. During these proceedings the

Applicant deleted some terms from the specification of goods and services contained in

the application for registration. It is not necessary to detail these changes but I have

reproduced the full list of the goods and services, as it stood on the date of the Hearing of

the opposition, at Annex 1.

2. The application was accepted for registration and advertised accordingly under No.

239779 in Journal No. 2111 dated 12 November, 2008.

3. Notice of Opposition to the registration of the trade mark, in respect of the goods and

services in Classes 16, 25, 38 and 41, was filed on 6 January, 2009 by Metro International

S.A. of 11 Boulevard Royal, L-2449 Luxembourg. The Applicant filed a counter-

statement on 4 February, 2009 and evidence was, in due course, filed by the parties under

Rules 20, 21 and 22 of the Trade Marks Rules, 1996 (“the Rules”).

2

4. The opposition became the subject of a hearing before me, acting for the Controller, on 19

June, 2014. The parties were notified on 20 August, 2014 that I had decided to uphold the

opposition in respect of “Advertising” in Class 35, but to allow the application to proceed

to registration for all other goods and services. I now state the grounds of my decision and

the materials used in arriving thereat in response to a request by the Opponent in that

regard pursuant to Rule 27(2).

Grounds of the Opposition

5. In its Notice of Opposition the Opponent refers to its proprietorship of the Trade Mark

(the “Earlier Mark”), which is registered under number 219849 with a

registration date of 14 December 1998, in respect of “Printed matter, including daily

newspapers and advertising papers” in Class 16. The Opponent then raises objection to

the present application under certain Sections of the Act, which I summarise as follows:

- Section 6 – the mark applied for is not capable of distinguishing the services of the

Applicant from those of other undertakings;

- Section 8(1)(b) – the mark is devoid of distinctive character;

- Section 8(3)(b) – use of the mark is likely to deceive the relevant public;

- Section 10(2) – the mark applied for is similar to the Opponent’s earlier mark and use

of the mark would result in a likelihood of confusion on the part of the public,

including a likelihood of association with the Opponent’s earlier trade mark;

- Section 10(3) – use of the mark would take unfair advantage of, or be detrimental to,

the distinctive character or reputation of the Opponent’s earlier trade mark;

- Section 10(4)(a) – use of the mark is prohibited in the State by an enactment or rule of

law

The Opponent claims also that the Controller should use his discretion to refuse the mark.

Counter-Statement

6. In its Counter-Statement, filed on 4 February 2009, the Applicant denies all the grounds of

opposition.