Trade mark decision

BL Number

O/388/03

Decision date

12 December 2003

Hearing officer

Mr D Landau

Mark

FARMACIA URBAN HEALING

Classes

03, 05, 42

Applicant for Invalidity

Pharmacia AB

Registered Proprietor

Farmacia Chemists Limited

Invalidity

Section 47(2) based on Sections 3(6), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 47 & Section 3(6): - Invalidity action failed.

Section 47 & Section 5(2)(b): - Invalidity action partially successful.

Section 47 & Section 5(3): - Invalidity action failed.

Section 47 & Section 5(4)(a): - Invalidity action failed.

Points Of Interest

• 1. The applicants for invalidity appealed to the Appointed Person. In his decision dated 9 August 2004 (BL O/244/04) the Appointed Person allowed the appeal in relation to ‘medical clinics and surgeries’ in Class 42 but dismissed the appeal in relation to the restricted specifications allowed by the Hearing Officer in Classes 3 and 5.

Summary

The applicants for invalidation own registrations for the mark PHARMACIA in Classes 1, 5, 9 and 10 and they also filed evidence in an effort to show a reputation in their mark. Use in relation to pharmaceuticals had taken place from 1975 onwards but that use was as a secondary mark in the form of a house mark. Following a takeover the house mark had been used in the form PHARMACIA & UPJOHN in the five year period prior to the launching of the invalidity action. Having carefully considered the evidence before him the Hearing Officer concluded that the applicants had not shown that they had a distinct and separate reputation in the mark PHARMACIA and that, as a consequence, they must fail in their grounds under Sections 5(3) and 5(4)(a). As no evidence had been filed in support of the Section 3(6) ground the applicants also failed on that ground.

Under Section 5(2)(b) the Hearing Officer decided that the respective marks were similar and went on to compare the respective goods and the applicants' goods with the registered proprietors services. Where the respective goods and goods and services were closely similar the Hearing Officer considered that there would be confusion of the public and invalidity thus succeeded in respect of certain of the registered proprietors' goods and services. The registered proprietors were allowed to retain their registration for restricted specifications.

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