Trade mark decision

BL Number

O/189/02

Decision date

30 April 2002

Hearing Officer

Mr M Reynolds

Mark

RIGEL

Classes

05, 42

Applicant

Rigel Pharmaceuticals Inc

Opponent

Efamol Limited

Opposition

Sections 3(1)(c); 3(3)(b) & 5(4)(b)

Result

Section 3(1)(c): - Opposition failed.

Section 3(3)(b): - Opposition failed.

Section 5(4)(b): - Opposition failed.

Points Of Interest

• 1. Plant Breeders Rights in relation to Section 5(4) : rights in a plant variety name
• 2. The test under Section 3 requires the tribunal "to have regard to the reasonably foreseeable circumstances of trade in the light of consumer perception and trade practice."

Summary

The opponents’ case was:- (a) RIGEL is the name of a variety of the plant Oenothera (evening primrose) and (b) they were the holders of Plant Breeders Right (No 6347) in that variety. Under Section 5(4)(b) the Hearing Officer was required to examine the situation regarding the opponents’ rights under the law relating to Plant Varieties. A detailed examination of this, however, led him to the conclusion that "plant variety rights, as with any statutory monopoly, were intended to be limited in scope"; it extended to reproductive material and .... harvested material and products of plants "but only where Ministers make provision by means of a specific scheme". It was not suggested that Oenothera were ever made the subject of such a scheme. The Hearing Officer concluded therefore that the scope of the opponents’ rights did not enable them to succeed under Section 5(4)(b) in respect of the goods in the applicants’ specification; still less in the case of the Class 42 services.

Under Section 3 the Hearing Officer concluded that it had not been shown that RIGEL served to designate a characteristic of the goods and services in question. Neither, he said, on the basis of the evidence, was there any reasonable probability of the plant varietal name being required for use as a designation of a characteristic of goods within the specification applied for. He went on to say that even if a valid objection under Section 3 was established, the situation could be cured by a suitable exclusion in the specification. The Section 3 objections failed.

Full decision O/189/02 52Kb