Two companies fought a pitched battle over the brand METRIX ELECTRONICS. One was trying to get it registered as a trade mark. The other had used the unregistered mark METRIX and also had a registered mark MULTIMETRIX. Who won out?
Who: Metrix Electronics Limited and Chauvin Arnoux UK Limited
When: November/December 2005
A recent electronics industry tussle over registration of a trademark underlined the importance of registering a brand as a trademark rather than simply relying on day to day use and suing for passing off.
The brand in question was METRIX ELECTRONICS. Metrix Electronics Limited had applied to register this mark for various products in Class 9 including digital multimetres, airflow testers and digital oscilloscopes.
Chauvin Arnoux UK Limited (CA) opposed the application on the basis of one unregistered trademark and one registered trademark. The unregistered trademark was METRIX and they had been using this for some years in connection with similar goods to those covered by Metrix Electronics' attempted registration.
In this case, under the Trade Marks Act CA had to persuade the court that they had a soundly arguable "passing off" case against Metrix Electronics. Here their case fell down because they simply did not have any evidence of actual sales to customers under the mark METRIX or details of how the goods had been sold. Without evidence of sales they could not hope to establish that they had sufficient goodwill in the business operated under the METRIX brand to sustain a passing off action.
Accordingly this attack on the Metrix Electronics application failed.
The second attack was based on CA's registered trademark MULTIMETRIX. This registration covered identical and similar goods to those in the Metrix Electronics application and in the circumstances CA argued that there was a likelihood of confusion on the part of the public between MULTIMETRIX and METRIX, to the extent that the METRIX ELECTRONICS application should be thrown out.
To try to bolster its case, Metrix Electronics referred to a registered trademark which it already had, METRIX ELECTRONIC PLC. This pre-dated the MULTIMETRIX registration obtained by CA, but the Court was not prepared to admit this argument, taking the view that there was nothing in the relevant subsection of the Act that required regard to be had to another registration standing in the name of the applicant, no matter how similar.
The verdict was that the goods covered by the METRIX ELECTRONICS and MULTIMETRIX marks were identical or closely similar and given the prominence of "metrix" in the MULTIMETRIX mark, the marks were visually, aurally and conceptually similar as a whole, so that there would be a likelihood of confusion to the relevant customer.
So CA's opposition succeeded and the court refused to register METRIX ELECTRONICS in the name of Metrix Electronics Limited.
Why this matters:
The case underlines the importance of keeping comprehensive records of all advertising and sales of products bearing a particular brand name and also the potential usefulness of applying to register multi-element brands as trademarks. If a registration is achieved, it may be possible, as this case shows, to use the non prefix or non suffix element of the mark to stop third parties registering similar branding.