Trade mark decision

BL Number
Decision date
23 July 2002
Hearing Officer
Mr M Reynolds
Ashbourne Pharmaceuticals Ltd.
Mundipharma Laboratories GmbH.
Section 5(2)(b).


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

Points Of Interest

  • 1. Comparison of marks used in relation to pharmaceutical products.


The opponents opposition was based on their ownership of the mark "Zytram" registered in Class 5 in respect of the same and similar goods.

The opponents filed extensive evidence about the dangers of similar marks being used in relation to pharmaceuticals and of the consequences arising from poor handwriting and failure to distinguish products bearing similar names. The opponents also claimed that "Z..tram" marks were rare; indeed the applicants’ and opponents’ marks were the only ones in this category.

The applicants claimed that the respective marks were not confusingly similar; that the respective goods were likely to be prescription only and that as TRAN was an abbreviation for the active ingredient Tranadol, this reduced the risk of confusion.

The Hearing Officer following the guidance set down in earlier decisions that marks in Class 5 should be compared on their merits and that undue significance should not be given to the consequences of confusing pharmaceutical marks. He also considered that there was insufficient evidence to establish that TRAN was an abbreviation for Tranadol. Thus the opponents mark was a distinctive mark for the goods at issue.

Under Section 5(2)(b) the Hearing Officer noted that identical and similar goods were at issue and, as the respective specifications were not restricted to prescription goods, the full range of goods had to be considered. In comparing the respective marks "Zytram" and "Zabtram" the Hearing Officer accepted that there were similarities. However, he considered they could be distinguished visually and aurally and there was no conceptual similarity. Overall he considered that there was no likelihood of confusion of the public. Opposition thus failed.

Full decision O/294/02 PDF document36Kb