Trade mark decision

BL Number

O/414/01

Decision date

25 September 2001

Hearing officer

Mr S P Rowan

Mark

MIRAGAN

Classes

05

Applicants

Allergan Inc.

Opponents

Glaxo Group Limited.

Opposition

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

Result

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

Section 5(4)(a) - Opposition failed.

Points Of Interest

• 1. There were the usual arguments as to the approach to be adopted in relation to conflicting marks for pharmaceutical products. Because of danger to human health it was argued the Registrar should adopt a tough line; on the other hand the argument was that the average consumer is more careful when purchasing pharmaceuticals and so quite similar marks could exist side by side. In the event the Hearing Officer decided to adopt a normal approach and compare the respective marks on their merits.
• 2. The opponents appealed the Hearing Officer’s decision to the Appointed Person. In her decision dated 5 July 2002 (BL O/293/02) the Appointed Person upheld the Hearing Officer’s decision.

Summary

The opponents opposition was based on their ownership of a registration for the mark IMIGRAN in Class 5 for a range of pharmaceutical products, and significant use of that mark in relation to a product for the treatment of migraines and headaches. The applicants goods were for the treatment of glaucoma. Identical and similar goods were therefore at issue and the Hearing Officer went on to compare the respective marks MIRAGRAN and IMIGRAN. He considered them to be visually different but to have some aural similarity. However, as the major differences in the two marks occurred at the beginning of the respective marks he did not consider them to be confusingly similar, even if imperfect recollection was taken into account. Opposition thus failed under Section 5(2)(b).

With regard to Section 5(4)(a) - Passing Off - The Hearing Officer concluded that the opponents were in not better position on this ground as compared to Section 5(2)(b) and thus decided that the opposition also failed on this ground.

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