Trade mark decision

BL Number

O/282/03

Decision date

19 September 2003

Hearing Officer

Mr M Foley

Mark

EN SURE

Classes

05

Applicant

DCS Europe Plc

Opponent

Abbott Laboratories

Opposition

Sections 5(2)(b), 5(3) & 5(4)(a)

Result

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

Section 5(3) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

• 1. The Hearing Officer accepted that the opponents had a reputation in their marks (Section 5(3)) but he did not think the respective goods would be associated and therefore detrimental, because the users of the opponents’ goods would obtain such goods by way of prescription and therefore they were not making a free choice in the marketplace.

Summary

The applicant’s mark was applied for in respect of 'Sanitary towels and tampons' whereas the opponents had a number of registrations in Class 5 for the marks ENSURE, ENSURE PLUS and ENSURE and device in respect of ‘diabetic substances for medical use and invalids foods'. Two of the registrations also covered 'Pharmaceutical, veterinary and sanitary substances and preparations' and these were part cancelled for such goods on application of these applicants after the relevant date. The Hearing Officer thus considered the opponents specification in full as at the relevant date.

Under Section 5(2)(b) the Hearing Officer had no difficulty in deciding that the respective marks were very similar. In passing he noted that ENSURE was an ordinary dictionary word with meanings relevant to the goods at issue. As regards the respective goods the Hearing Officer decided that they were different and that there was no likelihood of confusion.

Under Sections 5(3) and 5(4)(a) the Hearing Officer accepted that the opponents had shown that they had a reputation in their mark in relation to specific goods, namely invalids foods, but he considered these to be so different from sanitary towels and tampons that there was no likelihood of association between the respective marks or that there would be any affect on the distinctiveness of the opponents marks. Opposition also failed on these grounds.

Full decision O/282/03 116Kb