Tesco loses trade mark right over unsent documents

Tesco has lost the right to a Europe-wide trade mark on the word 'Metro'. The trade mark right for Europe has now passed to German retailer MIP Metro because Tesco did not submit a set of papers to the EU trade mark authority.

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.