Trade mark decision

BL Number
O/013/98
Decision date
29 January 1998
Hearing Officer
Mr M Knight
Mark
PROGAIN
Classes
05
Applicant
Zef Eisenberg
Opponent
Upjohn Limited
Opposition
Sections 3(6), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 3(6) - Opposition failed.

Section 5(2)(b) - Opposition failed.

Section 5(3) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

  • None

Summary

The opponents opposition was based on two registrations for the marks PREGAINE and REGAINE in respect of, respectively, shampoos for the hair and preparations for the treatment of baldness. There had been significant use of the REGAINE mark from 1988 onwards and modest use of the PREGAINE mark during the same period. The opponents claimed that the REGAINE mark was very well known as it was the only pharmaceutical to have shown appreciable benefits in the treatment of baldness. The applicants mark PROGAIN was for use in respect of a high fibre food supplement to help users gain weight.

Under Section 5(2)(b) the Hearing Officer compared the respective goods and after applying the usual tests determined that they were not similar or identical. However, he also compared the respective marks and concluded that PROGAIN and REGAINE were not similar. While he noted that there were differences between PROGAIN and REGAINE he considered, on the basis of imperfect recollection, that they were in fact confusing similar.

With regard to Section 5(3) the Hearing Officer considered in some detail whether or not use of the applicants mark would take unfair advantage of or be detrimental to the opponents mark, bearing in mind that the respective goods at issue were not similar. He accepted that the opponents had some reputation in their marks but felt that the evidence provided was insufficiently focussed to reach such a conclusion. As the respective marks were at best similar rather than identical the use of a similar mark on very different goods was unlikely to impact on the distinctiveness or be detrimental to the opponents' marks.

The grounds under Sections 3(6) and 5(4)(a) were also dismissed because the Hearing Officer concluded that the opponents had filed insufficient evidence to substantiate their claims.

Full decision O/013/98 PDF document31Kb