THE EVIL MEN DO LIVES AFTER THEM, BUT THE GOODWILL ISN'T INTERRED WITH THEIR BONES

The IPKat brings you news of a UK registered trade mark opposition that has potential implications for passing off and which ended up with an appeal to the Lord Chancellor’s Appointed Person (LCAP).

Farmacia applied to register a word and device mark containing the words FARMACIA URBAN HEALING in black, white and duck egg blue in Class 3 for toilet and cosmetic preparations; perfumes; preparations for the hair; aromatherapy; deodorants and air fresheners, in Class 5 for herbal remedies and nutritional products; vitamins and minerals; deodorants and in Class 42 for pharmacy advice; medical clinics and surgeries. Meanwhile Pharmacia owned the trade mark PHARMACIA for pharmaceuticals and various medical products and equipment. Pharmacia had used the PHARMACIA mark in the UK from 1962 until 1995, when it merged with Upjohn, at which point it began using PHARMACIA & UPJOHN instead. However, in 2000 it reverted to using PHARMACIA in its UK branding. Pharmacia opposed Farmacia’s application based on the Trade Marks Act 1994 s.5(2)(b) (similar mark, similar goods and confusion), s.5(3) (use that would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark) and s.5(4)(a) (use that would result in passing off).

The Hearing Officer rejected the opposition under ss 5(3) and 5(4)(a) since it had not been established that Pharmacia enjoyed a reputation under the PHARMACIA trade mark in 2000. He based this finding on the facts that (i) PHARMACIA had ceased using the PHARMACIA mark on its own between 1995 and 2000 and (ii) the mark had only been used as a secondary mark. However he allowed the opposition for certain of the goods under s.5(2)(b). Pharmacia appeal against this decision was partially however allowed in part.

In deciding whether Pharmacia had an earlier right that it could rely on to successfully oppose Farmacia’s mark under s.5(4)(a) the LCAP found that:

* A trader may retain the goodwill attached to his business even when he ceases to carry on that business. As long as the goodwill is retained, he can enforce his rights in any name which is attached to that goodwill. Pharmacia had goodwill in its pharmaceutical business by 1995 and that goodwill must have attached to the PHARMACIA trade mark which was used in relation to that business as a whole. While the trade mark PHARMACIA & UPJOHN was used for the next five years after 1995, this did not mean that the goodwill generated under the PHARMACIA mark used alone was abandoned. In fact, it was more likely that the goodwill would be retained by the use of the PHARMACIA element within the composite PHARMACIA & UPJOHN trade mark. This was supported by Pharmacia’s decision to revert to the use of PHARMACIA alone as a trade mark in 2000.
* The continuing goodwill of the PHARMACIA mark could be tested another way. If another pharmaceutical company began using the trade mark PHARMACIA in relation to pharmaceuticals in March 2000, Pharmacia would have been able to prevent such activity by an action for passing off.
* Although PHARMACIA had been used as a house mark in conjunction with other particular product and brand names, by 1995 it had been used on products, promotional literature and advertising and promotional materials in the UK for 30 years and must have become familiar with the wide range of medical professionals and patients with whom Pharmacia had dealings. Additionally, Pharmacia had spent a large amount of time and money in promoting the PHARMACIA mark.
* In order to succeed in a passing off claim, a claimant must show misrepresentation leading to likely damage as well as goodwill. The Class 3 and 5 goods were too different for the registration to be prevented by the law of passing off. However, since the use of the FARMACIA mark on the Class 42 services could lead to confusion, the registration was blocked with respect to those goods.
* There was no reason to come to a different conclusion with respect to ss5(3) and 5(2)(b) of the 1994 Act.

The IPKat says that the principle that a claimant can maintain reputation in his mark for passing off purposes even after he stops using it is well established. However, the idea that use of a mark as a component of another mark can help establish reputation in a mark is more novel.

Background on brand name changes here, here and here