Trade mark decision

BL Number

O/432/02

Decision date

22 October 2002

Hearing Officer

Mr M Reynolds

Mark

ZOPAX

Classes

05

Applicant

Ashbourne Pharmaceuticals Limited

Opponent

Glaxo Group Limited

Opposition

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

Result

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

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

Points Of Interest

• The matter of danger to public health was again raised in these proceedings but the Hearing Officer decided that the comparison of the respective marks should be on a normal basis.

Summary

During the course of the proceedings the applicants reduced their specification to "Pharmaceutical preparations and substances for the treatment of depression" but this was of no assistance to them under Section 5(2)(b) of the Act since the opponents registered mark ZOUIRAX had a broad specification in Class 5. Identical goods were thus at issue.

In his comparison of the respective marks Zopax and ZOUIRAX the Hearing Officer noted identical ZO prefixes and AX suffices but overall he considered them to be phonetically and visually different. As there was no conceptual similarity other than that both were invented words he concluded that they were not confusingly similar. Opposition thus failed under Section 5(2)(b).

During the course of the proceedings the opponents had filed evidence to show that their mark was well known in relation to pharmaceutical products for the treatment for herpes and cold sores. However, in view of his decision under Section 5(2)(b), the Hearing Officer decided that the opponents were in no better position under Section 5(4)(a) - Passing Off - and that they also failed in that ground of their opposition.

Full decision O/432/02 22Kb