MIP
Metro filed an application to create a European Community trade
mark of Metro in 1998 but Tesco had previously registered it in the
UK to use for its city-centre convenience shops. On 28th January
2000, Tesco opposed Metro's application on the basis of its earlier
UK trade mark registration for the METRO mark which was due for
renewal on 27th July 2000. On 13th June 2000, the Office for
Harmonisation in the Internal Market (OHIM), which is in charge of
Community trade marks, asked for a copy of the certificate of
renewal of Tesco's METRO mark given the impending renewal date.
Although this deadline for providing such proof was subsequently
extended until 13th March 2003, no such proof of renewal was ever
forthcoming from Tesco.
OHIM ruled in Tesco's favour on appeal but the decision was then
referred to Europe's Court of the First Instance, which has
reversed OHIM's decision and handed the rights to MIP Metro.
"OHIM had made the request, asking 'can you provide us with
proof of renewal of that registration'? Tesco never provided the
proof of renewal and this is why it has been rejected," said Lee
Curtis, a trade mark attorney at Pinsent Masons, the law firm
behind OUT-LAW.COM. "It had been renewed, but they didn't provide
the proof."
"This decision is quite tough on Tesco because they obviously
had the prior registration but they just got caught on a
technicality. They could have provided the information at the time
OHIM requested it," said Curtis.
Tesco does have one other opportunity to appeal, to the European
Court of Justice. "An appeal, limited to points of law only, may be
brought before the Court of Justice of the European Communities
against a decision of the Court of First Instance, within two
months of its notification," said a statement from the European
Commission.
Though the judgment may dismay Tesco executives, Curtis said
that it is unlikely to have a major impact on the company's
business. "They won't be stopped from using Tesco Metro in the UK
because they have the earlier UK registration. It just means that
they cannot now stop this community-wide registration by the
Germans," he said.
"Probably the golden rule is that OHIM tends to be quite hot on
relevant due dates, so provide the documents that OHIM requests
otherwise you're in trouble," said Curtis.
Disclaimer: We hope you find OUT-LAW’s content useful. It’s prepared by the lawyers at Pinsent Masons. Please remember, though, that it’s intended as general information only. It’s not legal advice. If that’s what you’re seeking, please
contact us. See also: our
full disclaimer
