Trade mark decision

BL Number: O/478/00
Decision date: 21 December 2000
Hearing Officer: Dr W J Trott
Mark: PROLONID
Classes: 05
Registered Proprietor: Vision Pharmaceuticals Limited
Applicant for Declaration of Invalidity: Pharmacia & Upjohn AB
Invalidity: Sections 47(1) and 47(2) based on Sections 5(2)(b), 5(4)(a) and 3(6)

Result

Section 47(1) & 3(6) - Invalidity failed

Section 47(2) & 5(2)(b) & 5(4)(a) - Invalidity failed

Points Of Interest

The procurement of specialised pharmaceuticals is very well regulated and operated by careful and experienced people. Confusion between marks is unlikely unless they are very similar.

Summary

Under Section 5(4)(a) - Passing Off - it was established that the applicants had used their HEALONID mark prior to any use by the registered proprietors; that such use was significant and that the goods traded by the two parties were identical - a solution of sodium hyaluronate as a viscous preparation for use during eye surgery. The Hearing Officer accepted that the applicants had a goodwill in their mark at the relevant date but doubted that they had, as claimed, a separate reputation in the LONID element. In any case he was provided with details about the purchasing of these specialist products and came to the view that confusion as to origin was not likely. The applicants therefore failed on this ground.

Under Section 5(2)(b) the Hearing Officer compared the respective marks PROLONID and HEALONID and came to the conclusion that they are orally, visually and conceptually different and therefore unlikely to be confused. Again he referred to the procurement procedures relating to pharmaceutical products though he noted that the consideration under this ground was wider in view of the wording of the respective specifications.

As regards Section 3(6) the Hearing Officer accepted that the adoption of a similar suffix by the registered proprietors was perhaps more then a coincidence but there was insufficient surrounding evidence to justify a finding of bad faith.

Full decision O/478/00 30Kb