Trade mark decision

BL Number
O/288/08
Decision date
21 October 2008
Hearing Officer
Mr G Salthouse
Mark
ZAM-BUK series of 6
Classes
05
Applicant
Sean Gillson
Opponent
Caroline Rose & Patricia Rose (t/a Rose & Co Apothecary)
Opposition
Sections 3(6) & 5(4)(a)

Result

Section 3(6): Opposition successful. Section 5(4)(a): Opposition successful.

Points Of Interest

  • The opponent in this case was using the mark SAM-BUK by agreement, but apparently without licence, while the registered rights were owned by another party. The Hearing Officer accepted that in the circumstances described the reputation and rights rested with the opponent.

Summary

The opponent in these proceedings claims to have used the mark ZAM-BUK for ten years prior to the filing of the application in suit. The background to the proceedings is as follows.

ZAM-BUK is a traditional antiseptic ointment which was made and sold in the UK for over 100 years. The product was made originally by the Zam-Buk Company then Fisons Ltd who were later acquired by Fisher Scientific. Production ceased in 1994 but Fisher authorised the opponent to make and sell the SAM-BUK product. Existing and potential customers were advised of this change.

Fisons Limited owned three registrations for the mark ZAM-BUK and these were assigned to Hoffman La Roche AC in 1994. These marks expired on 30 September 2002, 8 December 2005 and 18 January 2006. One of the registrations was assigned to Buyer Consumers Care AG in December 2005.

Production and sale of the ZAM-BUK product commenced in 1994 and output increased over the years with the product being produced at one stage by a Spencer Fawcett under licence, who had the facilities to produce increase quantities. In 2002/3 the applicant for the marks in suit was employed by the opponent and was involved in the manufacture and sale of the ZAM-BUK product. At this time the applicant’s sister and mother were employed by the opponent. All these people are related to the principals of the opponent.

Subsequently the applicant, his sister and mother left the opponent’s employment and set up a rival business nearby. When the applicant became aware of the expiry of the last registration for the mark ZAM-BUK on 18 January 2006 he filed the application in suit on 27 January 2007.

The Hearing Officer carefully reviewed all the evidence filed and accepted the opponent’s claims as to use and reputation. The ground under Section 5(4)(a) succeeded as did the ground under Section 3(6), as the Hearing Officer accepted that the applicant had been aware of the opponent’s use and reputation when he filed his application for registration of the mark ZAM-BUK.

Full decision O/288/08 PDF document75Kb