Trade mark decision

BL Number

O/310/05

Decision date

29 November 2005

Hearing officer

Mr J MacGillivray

Mark

METRIX ELECTRONICS

Classes

09

Applicant

Metrix Electronics Limited

Opponent

Chauvin Arnoux

Opposition

Section 5(2)(b)

Result

Section 5(2)(b): - Opposition successful.

Points Of Interest

• 1. See also BL O/314/05.
• 2. The applicant appealed to the Appointed Person. In his decision dated 25 July 2006 (BL O/210/06) the Appointed Person dismissed the appeal.

Summary

The opponent in these proceedings owns the registered mark MULTIMETRIX in Class 9 in respect of identical and similar goods as those of the mark in suit. It also filed evidence of use of predecessors in business extending back to the 1960s and points out that the predecessor of the applicant company was formed specifically to distribute goods from the French manufacturers under the METRIX mark. Following the acquisition of assets from its French predecessor in 1996 the opponent set up its own distribution company in the UK and that company has distributed METRIX products in the UK since that date. Turnover figures for the years 1997 to 2003 are provided. Use of the MULTIMETRIX mark only commenced at the beginning of the 2003.

The applicant company also filed evidence. It confirms that its predecessors were indeed set up by a British company and the opponent's predecessor to market the opponent's predecessor's goods under the METRIX mark in the UK. However, it also claims that it and its predecessor sold goods sourced from other manufacturers under the METRIX mark in the UK and this trade has continued under the mark in suit. The predecessor company also registered the mark METRIX ELECTRONICS PLC in Class 9 and it is now owned by the current applicant.

Under Section 5(2)(b) the Hearing Officer decided that the registered mark METRIX ELECTRONICS PLC did not impact on the decision he had to make as regards the conflict between the mark in suit and the opponent's MULTIMETRIX mark and should be disregarded. As identical and similar goods are at issue the only matter for decision was a comparison of the respective marks. The Hearing Officer noted that the distinctive element in the applicant's mark was the element METRIX and this was also the distinctive element in the opponent's mark as MULTI would be widely recognised as a descriptive combining from. The Hearing Officer concluded that the marks were confusingly similar and that the opposition under Section 5(2)(b) succeeded.