Trade mark decision

BL Number
O/012/98
Decision date
30 January 1998
Hearing Officer
Mr A James
Mark
HERPEX
Classes
05
Applicant
Beni-Med Naturliche Heilmittel GmbH
Opponent
Boehringer Ingelheim Limited
Opposition
Sections 9, 10, 11 & 12 of the Trade Marks Act 1938. Registrar’s Discretion

Result

Sections 9 & 10: - Opposition failed.

Sections 11 & 12: - Opposition successful.

Points Of Interest

  • 1. Prefix ‘HERP’. The Hearing Officer made clear in his decision that the opponents had no monopoly in the prefix ‘HERP’ and any conflict with other HERP marks had to be decided on a case by case basis.

Summary

The opponents opposition was based on their ownership of a registration for the mark HERPID in Class 5 in respect of the same and similar goods as those of the applicants. They also claimed extensive use from 1985 onwards and that their mark HERPID was the only HERP mark in use for the treatment of herpes and related conditions.

In relation to the ground of opposition under Sections 9 and 10, the opponents claimed that the applicants mark was too close to the descriptive word HERPES and thus not distinctive. The Hearing Officer disagreed. In his view the replacement of the letter ‘S’ with the letter ‘X’ produced an invented word which would not inhibit use of the word HERPES in any way. Opposition failed on this ground.

As regards the ground under Section 11. The Hearing Officer accepted that the opponents had extensive use of their mark HERPID, and that it was the only HERP mark in use at the relevant date. The Hearing Officer noted that identical and similar goods were at issue and went on to compare the respective marks HERPEX and HERPID. Placed side by side the Hearing Officer considered that the two marks could be distinguished but in view of the identical prefixes and on the basis of imperfect recollection he came to the conclusion that the respective marks were confusingly similar.

Under the 1938 Act there was an onus on the applicants to show that confusion would not arise if their mark was registered. In this case they had not discharged that onus. The opponents were thus successful in their ground under Section 11 and as the same matters were at issue this decision also applied to the ground under Section 12.

In view of decision under Sections 11 and 12 no exercise of Registrar’s discretion necessary or appropriate.