Trade mark decision

BL Number

O/055/98

Decision date

13 March 1998

Hearing Officer

Mr A James

Mark

PROSYNAP

Classes

05

Applicant

Johnson & Johnson

Opponent

Takeda Chemical Industries Limited

Opposition

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

Result

Section 5(2)(b) - Opposition partially successful.

Section 5(4)(a) - Not decided.

Points Of Interest

• None

Summary

The opponents opposition was based on their ownership of a registration for the mark PROSTAP in Class 5 in respect of essentially, “Pharmaceutical preparations for treating prostate cancer” and significant use of that mark in relation to such goods”. The applicant’s marks was for use in relation to "Pharmaceutical preparations relating to the protection of nerve cells". Applying the usual tests the Hearing officer concluded that the respective goods were similar in the context of Section 5(2)(b) and went on to compare the respective marks PROSYNAP and PROSTAP. Assuming normal and fair use of the marks in relation to the respective specifications the Hearing Officer concluded that there was a likelihood of confusion. However, that decision was finely balanced and he indicated that if the applicants restricted their specification to "Pharmaceutical products for the acute treatment of strokes" the conflict could be avoided.

The Hearing Officer briefly considered the matter under Section 5(4)(a) - Passing Off - in view of submissions about the colour of packaging etc. However, he noted that the mark applied for was the word PROSYNAP solus and therefore he did not need to consider such matters. In view of his decision under Section 5(2)(b) the Hearing Officer saw no need to decide the matter under Section 5(4)(a).

Full decision O/055/98 37Kb