Trade mark decision

BL Number
O/093/98
Decision date
30 April 1998
Hearing Officer
Mr M Knight
Mark
ECOFIX
Classes
10
Applicant
Zimmer Inc
Opponent
Acufex Microsurgical Inc
Opposition
Sections 3(1)(a), (b) & (c), 3(3)(a) & (b), 3(6) & 5(2)(b)

Result

Section 3(1)(a), (b) & (c) - Opposition failed.

Section 3(3)(a) & (b) - Opposition failed.

Section 3(6) - Opposition failed.

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

Points Of Interest

  • None.

Summary

The opponents opposition was based on their ownership of a registration of the mark ENDOFIX in Class 10 in respect of the same and similar goods as those of the applicants.

The opponents claimed that as ECO indicates products which are environmentally friendly deception would arise because the products on which the applicants intended to use their mark - external surgical fixation devices for orthopaedic use - were not generally biodegradable or have environment friendly properties. The applicants rejected these claims on the basis that in the context of the goods at issue ECO was neither descriptive nor was it deceptive in that no-one would expect such products to be ECO friendly.

As regards conflict between the respective marks the opponents filed the results of a survey which they had carried out among some 50 orthopaedic surgeons. Of the 19 who had responded by completing questionnaires 47% considered the marks to be similar and 53% thought products under the two marks were likely to come from the same source.

Under Sections 3(1), (b) and (c) and 3(3)(a) and (b) the Hearing Officer decided that the mark at issue was neither descriptive or deceptive in relation to the goods at issue and thus opposition failed on these grounds.

As the opponents filed no evidence in support of their objections under Sections 3(1)(a) and 3(6) the Hearing Officer had no difficulty in dismissing these grounds as being without substance.

Under Section 5(2)(b) the Hearing Officer noted that identical and similar goods were at issue. In comparing the respective marks ECOFIX and ENDOFIX the Hearing Officer noted the results of the survey evidence but was not satisfied as to the way it was carried out and had some doubts about the small number of persons who responded. He therefore concluded that he must compare the marks on a normal basis. On this basis he concluded that the respective trade marks were not similar and that opposition also failed on this ground.

Full decision O/093/98 PDF document33Kb