Trade mark decision

BL Number: O/244/04
Decision date: 9 August 2004
Appointed Person: Mr David Kitchin QC
Mark: FARMACIA URBAN HEALING
Classes: 03, 05, 42
Applicant for Invalidity: Pharmacia AB
Registered Proprietor: Farmacia Chemists Limited
Invalidity: Section 47(2) based on Sections 5(2)(b), 5(3) & 5(4)(a). Appeal to the Appointed Person.

Result

Section 47 & Section 5(2)(b) - Appeal dismissed

Section 47 & Section 5(3) - Appeal dismissed

Section 47 & Section 5(4)(a) - Appeal dismissed Classes 3 & 5 Appeal allowed Class 42.

Points Of Interest

1. See also Hearing Officer’s decision dated 12 December 2003 (BL O/388/04)

Summary

In his decision dated 12 December 2003 (BL O/388/03) the Hearing Officer had concluded that the applicant for invalidation did not have a separate and distinct reputation in the mark PHARMACIA because it had been used as a house mark in the combination PHARMACIA & UPJOHN. As a consequence he found that the invalidation action failed in respect of the Sections 5(3) and 5(4)(a) grounds. The Hearing Officer went on to find the applicant partially successful under Section 5(2)(b) and reduced the registered proprietors specification to read as follows:

Class 3:

Cosmetic preparations; perfumes, aromatherapy preparations, deodorants and air fresheners

Class 5:

Deodorants

Class 42:

Medical clinics and surgeries.

On appeal the Appointed Person noted that the applicant had used the housemark PHARMACIA for many years up to 1995 and had a significant reputation in the mark. He believed that that reputation would have been retained even though it had been used in the combination PHARMACIA & UPJOHN during the five years proceeding the invalidation action. Thus the Hearing Officer had been in error to find otherwise.

The Appointed Person went on to confirm the Hearing Officer’s view that the essential element of the registered mark PARMACIA and the applicant’s mark FARMACIA are very similar. However, in relation to the Classes 3 and 5 of the registered proprietor, the Appointed Person decided that there was unlikely to be any confusion as to origin because the respective goods were different and the proprietor had traded for a number of years without any confusion coming to light.

The Appointed Person took a different view in relation to the Class 42 services as he considered that medical clinics and surgeries were much closer to the core pharmaceutical business carried on by the opponent. Invalidity action successful in respect of Class 42.

In view of his decision under Section 5(4)(a). The Appointed Person saw no need to consider Sections 5(3) and 5(2)(b) or to vary the Hearing Officer’s decision in relation to these Sections.

Full decision O/244/04 89Kb