Trade mark decision

BL Number
O/290/05
Decision date
27 October 2005
Hearing Officer
Mr G Salthouse
Mark
DERMAX
Classes
05
Applicant
Dermagenics Europe BV
Opponent
Diomed Developments Ltd
Opposition
Sections 5(2)(a), (b) & 5(3)

Result

Section 5(2)(a): - Opposition successful.

Section 5(2)(b): - Not considered.

Section 5(3): - Not considered.

Points Of Interest

  • 1. None

Summary

The opponent's opposition was based on its ownership of the marks DERMAX, DERMAL, and DERMOL registered in Class 5 in respect of "Pharmaceutical preparations and substances". The applicant's specification in Class 5 was in respect of "Dressing material and dressings for the treatment of wounds".

The opponent filed details of use of its DERMAL mark which it claimed had been in use for over forty years and has been used as a house mark in respect of a number of products. Significant turnover figures for the years 1999-2002 were also provided. The mark DERMOL has been used since 1997 on a more modest scale and preparations are currently in process to use the mark DERMAX.

The applicant claimed that there are distinct differences between dressings and pharmaceuticals; that they are not often made by the same manufacturers and that professional staff in hospitals and the like would order them from different sources and were unlikely to assume any connection between the goods, even if the marks were identical.

The Hearing Officer considered that the opponent's best case rested on its DERMAX registration and went on to consider the ground under Section 5(2)(a). He noted that in comparing the respective goods he must consider both specifications and take account of normal and fair use across the whole range of goods. Applying the usual tests the Hearing Officer had no difficulty in concluding that the respective goods were similar since they could be sold through the same outlets and could be used in close association with each other. The opposition succeeded on this ground.

In view of his decision under Section 5(2)(a) the Hearing Officer saw no need to consider the grounds under Sections 5(2)(b) and 5(3).

Full decision O/290/05 PDF document35Kb