Trade mark decision

BL Number

O/519/02

Decision date

13 December 2002

Hearing officer

Dr W J Trott

Mark

DEVICE ONLY MARK

Classes

05, 10

Applicant

Glaxo Group Limited

Opponent

Riker laboratories

Opposition

Sections 3(1)(b); 3(1)(c); 3(1)(d) & 3(6)

Result

Section 3(1)(b) - Opposition successful

Section 3(1)(c) - Opposition failed

Section 3(1)(d) - Opposition failed

Section 3(6) - Opposition successful

Points Of Interest

• 1. 3D marks : lack of intention to use established by the shape of the mark.
• 2. Survey evidence.

Summary

The Hearing Officer dealt first with the Section 3(6) objection, by which it was alleged that the applicants did not have, at the date of application, an intention of using the mark. After a short excursus on the subject of bad faith and lack of intention to use, the Hearing Officer accepted the contention that the applicants could have had no valid intention of using the mark on a ‘dry powder inhaler’ since such items do not come in the form depicted by the mark.

The opponents would therefore succeed on that ground, he said, but he went on to say that the finding was redundant in view of the outcome of the remainder of the opposition.

He then went on to consider the Section 3(1)(c) and Section 3(1)(d) grounds. On a "strict application of the word 'exclusively'," and noting that the colour combination was not customary in the trade, he found that the Section 3(1)(d) ground failed; remarking, however, that the conclusion was 'finely balanced'. The ground under Section 3(1)(c) failed also.

After reviewing the matter under Section 3(1)(b), however, the Hearing Officer was not convinced by the evidence that the mark would be seen as identifying the applicants’ business; it was devoid of distinctive character. The Hearing Officer therefore went on to consider the evidence of use, including survey evidence. In the result the Hearing Officer was not convinced that the mark had acquired trade mark status. The opposition therefore succeeded under Section 3(1)(b).