Trade mark decision

BL Number

O/574/01

Decision date

11 December 2001

Hearing officer

Mr David Kitchin QC

Mark

MEDISON

Classes

09, 10

Applicant

Medison Co Ltd

Opponent

Medicon EG Chirurgiemechaniker-Genossenschaft

Opposition

Sections 3(6) & 5(2)(b)

Result

Section 3(6): - Opposition failed.

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

Points Of Interest

• 1. This was an appeal from the Hearing Officer’s decision dated 17 January 2001 (SRIS O/026/01)

Summary

With regard to their ground of opposition under Section 3(6) the opponents claimed that the applicants had filed their mark being aware of the fact that the opponents had a registration in the UK and that the parties had had disputes in other jurisdictions. The Appointed Person did not see how a filing in these circumstances could be an act of bad faith. An applicant was perfectly entitled to file an application if he believed that he was entitled to a registration even if he was aware of potential objections from another party. Opposition failed on this ground.

The opponents had filed evidence in support of a claim that they had an enhanced reputation in their mark in the UK. However, much of the evidence of use was after the relevant date and the Hearing Officer had decided that the opponents had only an average reputation in their mark at the relevant date. The Appointed Person accepted this finding and went one to review the Hearing Officer’s finding under Section 5(2)(b). He concluded that the Hearing Officer had applied the proper tests when comparing the respective marks M and device MEDISON and MEDICON; that he had taken account of the nature of the goods and the nature of the average customer. Having compared the marks globally the Hearing Officer had decided that there was no realistic likelihood of confusion. The Appointed Person confirmed this view. Opposition on this ground failed.