Trade mark decision

BL Number
Decision date
17 January 2001
Hearing Officer
Mr G Salthouse
09, 10
Medison Co Ltd
Medicon EG Chirurgiemechaniker-Genossenschaft
Sections 3(1)(b), 3(6), 5(2)(b), 5(3) and 5(4)


Section 3(1)(b) - Opposition failed

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

  • 1. The opponents appealed the Hearing Officer’s decision to the Appointed Person. In his decision dated 11 December 2001 (BL O/574/01) the Appointed Person upheld the Hearing Officer’s decision.


The opponents filed no evidence to support their allegation that the mark applied for was devoid of distinctive character. However, at the hearing their representative argued that the mark was phonetically the word "medicine" and thus non-distinctive for the goods at issue - medical apparatus in Class 10 and Class 9 goods for use as medical workstations. The Hearing Officer noted that the mark consisted of a letter M, a series of rays or a "force field" emanating from it as well as the word MEDISON. He concluded that the mark as a whole did have distinctive character.

Under Section 5(2)(b) the Hearing Officer established that identical goods were at issue since the opponents had a registration of their mark MEDICON in Class 10 and also use of their mark in relation to medical instruments. The Hearing Officer compared the respective marks MEDICON and MEDISON and device and concluded that visually they were distinct but aurally quite close. He then went on to look at the channels of trade and concluded from the evidence and the submissions made that the goods at issue were likely to be purchased by specialist buyers in hospitals and the like and used by doctors and nurses who would exercise care in distinguishing the marks. In totality, therefore, he believed there was no realistic likelihood of confusion.

The Hearing Officer dealt only briefly with the grounds under Sections 5(3) and 5(4)(a) and concluded, in view of his decision under Section 5(2)(b), that the opposition also failed on these grounds.

Full decision O/026/01 PDF document87Kb