Trade mark decision

BL Number

O/458/02

Decision date

11 November 2002

Hearing officer

Mr A James

Mark

Oncolyse

Classes

05, 10

Applicant

Biovex Limited

Opponent

Novartis AG

Opposition

Section 5(2)(b)

Result

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

Points Of Interest

• 1. Applicants allowed a period to restrict their specification in Class 5. Opponents will be allowed a period to comment on the revised specification.
• 2. The applicants restricted their specification to that proposed by the Hearing Officer. As the opponents had only been partially successful the Hearing Officer awarded them only 75% of the normal award costs (see BL O/051/03).

Summary

The opponents opposition was based on their ownership of a registration in Class 5 of the mark ONCOLAR in respect of the same and similar goods. They also filed information to show that ONCO/ONKO marks are relatively rare in the marketplace in relation to pharmaceutical goods. However, ONCO is meaningful in that it is part of the word ONCOLOGY meaning the study of tumours.

Under Section 5(2)(b) the Hearing Officer proceeded on the basis of goods of interest to the applicants, namely products for the treatment of tumours (and not their claimed specification). Bearing in mind the descriptive nature of ONCO in relation to such goods the Hearing Officer concluded that in relation to such goods the marks ONCOLYSE and ONCOLAR were not confusingly similar. He therefore indicated that if the applicants restricted their specification to such goods the opposition would fall away.

The opponents indicated that they were not opposing the applicants Class 10 application.