Trade mark decision

BL Number
O/148/06
Decision date
8 June 2006
Hearing Officer
Mr M Reynolds
Mark
FELENDIL Series of 2 Felendil
Classes
05
Applicant
Ratiopharm GMBH
Opponent
Astrazeneca AB
Opposition
Sections 5(2)(b) & 5(4)(a)

Result

Section 5(2)(b): Opposition successful. Section 5(4)(a): Not considered.

Points Of Interest

  • 1. See also appeal to the Appointed Person the extension of time and procedural matter. Decision dated 9 November 2006 (BL O/334/06).
  • 2. Opponent appealed to the Appointed Person. Appeal dismissed. See decision dated 14 March 2007 (BL O/079/07).

Summary

The opponent’s opposition was based on its ownership of the registered mark PLENDIL in Class 5 and its use of that mark in respect of pharmaceutical preparations based on the active product felodipine for the treatment of angina and hypertension.

Both parties filed evidence and it transpired that the applicant’s mark was to be used in relation to an identical preparation as that of the opponent and for the same purpose ie the treatment of angina and hypertension. Thus identical goods were at issue in these proceedings.

Under Section 5(2)(b) the Hearing Officer compared the respective marks. He noted that both were invented words and that the opponent’s mark had strong inherent qualities. While the opponent had significant user of its mark the Hearing Officer thought this fact was not decisive when comparing the respective marks. The Hearing Officer noted that both marks were of similar length one having seven letters and the other eight. Both marks had six letters in the letter sequence LENDIL. Thus there was some visual similarity which was to some extent offset by the different prefixes. Also there was a likelihood of aural confusion as it was possible that the applicant’s mark could be shortened to two syllables. Taking all the relevant factors into account, including the likely average customer, he concluded that the public would wrongly believe that the respective goods came from the same or economically linked undertakings. Opposition thus successful.

The opposition was in respect of certain goods and if the applicant so wished it could file a Form TM21 restricting its specification to the uncontested goods and proceed in respect of such goods to registration.

In view of his decision under Section 5(2)(b) the Hearing Officer saw no need to consider the ground under Section 5(4)(a).

Full decision O/148/06 PDF document48Kb