Trade mark decision

BL Number
O/224/05
Decision date
4 August 2005
Hearing Officer
Mr G Attfield
Mark
DALPROFEN
Classes
05
Applicant for Invalidity
Warner-Lambert Company LLC
Registered Proprietor
Peach Ethical Limited t/a Peach Pharmaceuticals
Invalidation
Section 47(2)(a) based on Section 5(2)(b)

Result

Section 47(2)(a) based on Section 5(2)(b): - Invalidation action successful.

Points Of Interest

  • 1. None

Summary

When the applicant applied for invalidity a copy of the application was sent to the registered proprietor and a period set for the filing of Form TM 8 and Counterstatement. In the event the registered proprietor responded outside the period allowed and it was advised that the application would be treated as undefended. The registered proprietor did not contest this decision.

The applicant's application for invalidation was based on its ownership of a registered mark CALPROFEN in Class 5 in respect of identical goods to those included within the specification of the mark in suit. It submitted that the respective marks were similar and registration of the mark in suit was contrary to the provisions of Section 5(2)(b).

The Hearing Officer compared the respective marks DALPROFEN and CALPROFEN and noted that the only difference was in the initial letter. In his view the marks were visually and aurally similar and the presence of the word PROFEN in both marks meant there was also conceptual similarity. Overall he decided that in relation to identical goods, the respective marks were confusingly similar. The application for invalidation thus succeeded.

Full decision O/224/05 PDF document24Kb