Trade mark decision

BL Number

O/067/03

Decision date

13 March 2003

Hearing officer

Mr D Landau

Mark

DISGREN

Classes

05

Applicant

J URIACH Y CIA, SA

Opponent

Reckitt Benckiser Healthcare (UK) Limited

Opposition

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

Result

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

Section 5(4)(a): - No formal finding.

Points Of Interest

• 1. Survey evidence : flaws.
• 2. Family of marks; ‘rule of thumb’, at least three marks required.
• 3. Comparison of the marks DISPRIN v DISGREN.

Summary

The opposition was based on three marks belonging to the opponents, viz:- DISPRIN, DISPRIN CV and DISPROL, all registered in Class 5. The opponents also claimed that these constituted a family of marks. The Hearing Officer dealt with this latter aspect first.

In his assessment only the marks DISPRIN and DISPROL could make any claim to be a family, since DISPRIN CV was just another DISPRIN mark. Since by a ‘rule of thumb’ a minimum of three marks was needed to form a family, the opponents’ claim was not made out. Moreover, the common element being DISPR there was no repetition of that common element in the applicants’ mark.

The Hearing Officer then turned to a consideration of the matter under Section 5(2)(b), in which he confined his assessment to that involving the clash between the marks DISPRIN and DISGREN. The goods, he decided, were identical. He went on to compare the marks; in the result he found these to be similar. Having taken account of the identicality of the goods, the degree of similarity in the marks, the distinctiveness of the earlier mark (DISPRIN) and the nature of the purchasing decision, the Hearing Officer concluded that there existed a likelihood of confusion. The opposition under Section 5(2)(b) succeeded accordingly.

The Hearing Officer made no finding under Section 5(4)(a).