Trade mark decision

BL Number
Decision date
1 December 2005
Hearing Officer
Mr J MacGillivray
Metrix Electronics Limited
Chauvin Arnoux UK Limited
Section 5(4)(a)


Section 5(4)(a): - Opposition failed.

Points Of Interest


The opponent in these proceedings claimed in its evidence that predecessors in business had used the mark METRIX in the UK from the 1960s. A predecessor of the applicant company had been established about 1995 by a predecessor of the opponent in conjunction with a British company specifically to market goods under the METRIX mark in the UK. Following the takeover of the French parent in 1996 the opponent company had been established in the UK to market its goods. Thus the METRIX mark has always been a manufacturer's mark in relation to goods sold in the UK and the mark is a registered trade mark in France. Turnover figures for the years 1997 to 2003 are provided.

The applicant company also filed evidence. It confesses that its predecessor was indeed set up by a British Company and the opponent’s predecessor to market the opponent's predecessor's goods in the UK under its METRIX mark. 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 but this mark did not impact on the Hearing Officer's decision.

In his consideration under Section 5(4)(a) the Hearing Officer was concerned about the nature of the opponent's evidence. He noted that there was no specific evidence as to actual sales under the mark in the UK; no details as to how the goods were sold or to whom and there was no supporting evidence from actual customers. In addition evidence as to promotion of the METRIX mark was sketchy and information about a web-site was after the relevant date. Overall the Hearing Officer concluded that the opponent depended too much on assertion and submission and decided that it had not established that it had the necessary goodwill to support the Section 5(4)(a) ground of opposition. Opposition failed.

Full decision O/314/05 PDF document90Kb