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Monday, 26 September 2005

TWO TM DECISIONS FROM IRELAND



The IPKat has been straying far from home again, this time reaching that portion of cyberspace that corresponds to the Emerald Isle. He's just found two recent trade mark decisions, both from the Irish Patents Office. They are

* McDermott Laboratoties (yes, that's how they're spelled on the click-through and on the pdf file containing the decision) Limited's application; opposition of May & Baker Ltd, 29 August 2005. McDermott applied to register ZIMOCLONE for pharmaceutical products in Class 5; May & Baker opposed, arguing that there was a likelihood of confusion with their earlier Class 5 mark for ZIMOVANE. Reminding the parties that the test was one of likelihood of confusion, not possibility of confusion, the Tim Cleary (for the Controller) said that while he could not rule out any possibility, he would not say that confusion was likely, especially since they were prescription products.

May & Baker also opposed on a load of other totally unsubstantiated grounds. The IPKat considers this to be a stupid, unnecessary, time-wasting practice that has no right to persist in the fair land of Ireland and which does no credit to any of us in the twenty-first century. As Tim Cleary said:

"Notwithstanding the fact that the Opponent did not formally abandon the other grounds of opposition, namely those under Sections 6(1), 8(1)(b), 8(3)(b), 8(4)(a), 10(1), 10(3), 10(4)(b), 37(2) and 42(2) of the Act, I am satisfied that there is no need for me to give them any serious consideration. Because those grounds have not been supported by relevant evidence or argument, a prima facie case has not been made out under any of the relevant Sections of the Act and there is no onus on the Applicant to respond. Nor do I consider it necessary for me to do more than to state that I dismiss the opposition under each of those Sections as unsubstantiated".
The IPKat has a golden rule in these cases: the more unsubstantiated grounds the opponent raises, the more he shouts to the high heavens that he doesn't have an arguable case. Merpel asks, what's a laboratotie?


* "Podravka" D.D. Prehrambena Industrija's application; opposition of Société des Produits Nestlé S.A., 11 July 2005 (also a decision of Tim Cleary). Croatian company Podravka applied to register, for foods in Classes 29 and 30, a figurative sign consisting of a chef. Nestlé opposed, (i) citing a likelihood of confusion with its own word, logo and figurative chef signs for foods in Classes 29 to 32 and (ii) the proposition that it could bring an action for passing-off against Podravska's chef. Both chefs are displayed in the transcript of the decision.

The opposition - which invoked eight grounds, most of which once again were non-starters (similarly commented on by the hearing officer) - succeeded on both grounds, there being not merely a likelihood but a high probability that consumers would be confused, given the similarity of the respective chefs and the similarity of the parties' respective products. No rocket science here, but a piece of solid judgment from the Patents Office.

Irish chefs here, here and here

3 comments:

Guy said...

In the United Kingdom the Trade Marks Registry requires on Form TM7, the notice of opposition, a statement of truth; this follows CPR. Apparently ireland does not require this.

Anonymous said...

I don't think it's fair to criticize. If an opponent is eager to prevent the registration of a competitor's trademark he's surely entitled to use every means at his disposal. If it turns out that he cant substantiate his claims, he loses but at least he knows he's raised every issue.

Anonymous said...

As a dual qualified Irish and English practitioner, the practice before the UKIPO has much to commend it. It has done wonders to reduce the time oppostions take and certainly concentrates the mind. The practice is even stricter before the Commercial Court in Ireland and I see no reason why the same can't apply to proceedings before the Irish Patents Office.

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