How long have you been with the company?
I started working at METRO Group five and a half years ago. Before this I was a lawyer in two quite well-known private practice law firms in Hamburg for three years. After that I was hired by METRO and shifted to Düsseldorf to establish an IP and trademark department. It’s been a great challenge to build the department, and I was very excited about getting the job.
When I joined METRO Group its trademarks were literally splattered all over the group, and the objective was to centralize trademark management in order to professionalize and optimize it.
For cost-saving reasons we in-sourced all trademark registration processes and took over from external lawyers who had done that work in the past. At the same time the portfolio started to expand and diversified significantly since the operational significance of retailers’ brands was being paid much more attention to.
All together it has been a real management challenge to meet all these requirements at the same time, and I am very proud my team and I were able to fulfil them.
What are the main brands you have?
We have METRO, which is the main brand since it is the name of the group and of our strongest sales line at the same time. Other brands are our sales lines MAKRO which is a sister company of METRO, REAL, GALERIA KAUFHOF and MEDIAMARKT/SATURN. Next to that we have a broad trademark portfolio for each of the sales lines.
What is the business model of METRO Group?
METRO Group is focused on retail and wholesale in food and non-food products and is generating synergies thereof. The drivers of success are internationalization and innovation.
What are the strengths and weaknesses of the brand METRO from a trademark law perspective?
METRO has a tendency to be considered as descriptive, which makes it tough to protect the brand against dilution. People who are using METRO as a brand or a domain name or as a component thereof always argue that “metro” means metropolis or underground. That may be correct to a certain extent in the English-speaking parts of the world. However, even in the US METRO has been accepted by the USPTO as a trademark for a very broad range of products and services which shows that even in the US “metro” is to the largest extent not a descriptive term.
Also, in Spain we have a difficult conflict with Madrid de Metro, which is the public transport system in Madrid and owns extensive trademark rights in the brand METRO. In our opinion this is sufficient proof that metro is not descriptive, and we make all endeavors to hold this up.
Another problem with METRO is that we are offering retail and wholesale services, which only recently became registrable services. Until the Praktiker decision of the ECJ in 2005 retail and wholesale were considered auxiliary services to selling branded products, and prior to the Praktiker decision it had been impossible to get a trademark registration in most countries in the world, including our home base Germany.
Fortunately, the international landscape for IP in retail and wholesale looks very different now. This requires and facilitates a completely new trademark management strategy.
How do you maintain control of the brands?
Like any other attentive trademark owner we monitor trademark registrations worldwide and in many countries we also monitor the registration of company names. With regard to METRO we try to approach our opponents at an early stage of their using METRO in order to make changes for them as little hurtful as possible.
How many trademark registrations do you have and in how many countries?
We have 15,000 registrations in 55 countries, most of them in Germany, eastern Europe and Asia.
How has the brand changed since you’ve been there?
The brand itself has not changed from a legal perspective. However, the fact that retail and wholesale can nowadays be registered as protected services has made life much easier for us. Not only can we apply for what we are actually doing, but also the research for other parties using METRO for retail or wholesale has become much easier.
What has been the most challenging aspect in maintaining your brand in today’s global environment?
The greatest challenge is to keep METRO from acquiring a descriptive meaning. Indeed we put a lot of effort into it. At the same time we always need to watch out that our reputation does not suffer any harm. Especially when our opponents are small companies the public may raise the criticism that Goliath is chasing David. Therefore, we must be consistent and systematic in our defense on the one hand but careful about how we approach each single case on the other hand.
What do you like most about working in trademarks?
I like that it requires a lot of strategic thinking, not only when figuring out strategies on how to defend a trademark but also when researching and registering new trademarks internationally at reasonable costs and work expense. One always has to think ahead and develop tactics on how to get your marks in all trademark registers. Later on one has to find a way how to handle global conflicts with third parties. A lot of these conflicts have an international dimension, which is an aspect I really like about trademark work.
Background: the Praktiker case and retail marks
Praktiker, a well-known German hypermarket chain, had its trademark PRAKTIKER denied by the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt).
The company had applied for a trademark for PRAKTIKER for the service of “retail trade in building, home improvement, gardening and other consumer goods for the do-it-yourself sector.”
The Office disallowed the trademark explaining that the retail trade is not an independent service and retail trade deals only with the distribution of goods.
Praktiker appealed to the Federal Patents Court (Bundespatentgericht), claiming that “the economic trend towards a service society necessitated a re-appraisal of retail trade as a service.”
The Court referred questions to the European Court of Justice (ECJ), which ruled in favor of the company on July 7 2005. The ECJ confirmed that article 2 of the European Trade Marks Directive says that “a trademark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”
The Court stressed that in the retail industry the goal is the sale of goods to consumers and that this trade includes, in addition to selling, all the activity that goes on to encourage the consumers to buy.
Thus the Court stated that “for the purposes of registration of a trade mark for such services, it is not necessary to specify in detail the service(s) in question. However, details must be provided with regard to the goods or types of goods to which those services relate.”
The ECJ also noted that the Office for Harmonization in the Internal Market (OHIM) accepts service trademarks for the retail trade as Community trade marks. This case helped in defining the rules for retail trademarks more clearly and trademarks for the retail industry have been easier to get since this judgement.
Background: METRO over the years
1996 METRO is formed through a merger of the retail companies Asko Deutsche Kaufhaus, Kaufhof Holding and Deutsche SB-Kauf.
It goes on the stock market in the same year and its shares are listed for the first time on the DAX German Stock Index. With a market capitalization of DM 2.07 billion, METRO ended the year 1996 as one of the 20 largest publicly listed companies in Germany. The company expands into Romania and China.
1997 It advances its expansion and wholesale outlets are established in the Czech Republic and Poland. Its turnover abroad in 1997 accounts for 7.1% of its total turnover.
1998 METRO shares outstrip all other DAX 30 stocks and it goes on to streamline its portfolio further. In 1998, business abroad already contributes 35.2% to total turnover. Media Markt expands into Poland.
1999 METRO liquidates its retail properties and consistently expands its international presence with 16 METRO Cash & Carry wholesale outlets, 10 Real hypermarkets and 47 nonfood specialty centers open abroad.
The share of turnover generated outside of Germany grows to 39.2%.
2000 It develops into an internationally oriented company with decentralized management teams.
The share of its turnover generated outside of Germany grows to 42.2%. The group employs 220,000 people in 22 countries.
2001 80 new locations are added in 2001, including the first METRO Cash & Carry wholesale outlets in Russia.
2002 In November 2002, METRO AG takes a further step in consolidating its position as a modern, international wholesale and retail company and presents itself on a worldwide scale as the METRO Group.
This positioning is supported by the brand message: METRO Group—The Spirit of Commerce. The Group enters the Japanese and Vietnamese markets.
2003 Business in eastern Europe and Asia results in a strong increase on sales. METRO Cash & Carry opens its first stores in Ukraine and India.
2004 By the end of the year, the group is active in 30 countries.
Three sales divisions celebrate jubilees in 2004: Media Markt and Saturn mark their 25th year in business, METRO Cash & Carry turns 40 and Galeria Kaufhof looks back on a 125-year company history.
2005 The first METRO Cash & Carry wholesale outlet in Serbia and Montenegro opens its doors. Real enters the Russian market and Media Markt establishes a location in Greece.
2006 MediaMarkt expands into Sweden and Russia, while Real enters the Romanian market.
The takeovers of Wal-Mart Germany, and the stores of French hypermarket chain Géant in Poland, also strengthen Real’s market position.
2007 METRO Cash & Carry opens its first wholesale store in Pakistan and MediaMarkt enters Turkey.
Source: METRO.DE website
