Trade mark decision
- BL Number
- Decision date
- 13 September 2004
- Hearing officer
- Professor Ruth Annand
- Registered Proprietor/Respondent
- Chugai Seiyaku Kabushiki Kaisha
- Applicants for invalidation/appellants
- Biopartners GmbH
- Appeal to the Appointed Person against the decision of the Registrar’s Hearing Officer in invalidation proceedings.
Appeal successful, registration declared invalid.
Points Of Interest
- 1. Invented words: “marks need not necessarily convey a meaning in order to be conceptually similar?
At first instance (see BL O/143/04) the Hearing Officer had rejected the application for invalidation, in which it had been claimed that the clash between the marks RAVANEX v RAVANSA meant that the mark in suit had been registered contrary to the terms of Section 5(2)(b).
Having reviewed the Hearing officer’s decision the Appointed Person concluded that the Hearing Officer had erred in not undertaking a global appreciation of the visual, aural and conceptual similarities but had instead conducted the exercise in the abstract, paying regard to differences rather than to similarities and differences. Moreover, the Hearing Officer had concluded that there was no conceptual similarity since neither word had a meaning. The Appointed Person, however, held that marks need not necessarily convey a meaning in order to be conceptually similar. The fact that neither mark has a known meaning actually makes them less easily distinguishable.
Also, said the Appointed Person, the Hearing Officer had not considered the risk of indirect confusion. Association was a relevant factor in a global appreciation of likelihood of confusion.
The Appointed Person went on to make her own assessment and, in the result, upheld the appeal.
Full decision O/313/04 29Kb