Trade mark decision

BL Number

O/112/00

Decision date

23 March 2000

Hearing officer

Mr A James

Mark

AHP DERMAKIND

Classes

03, 05

Applicant

Dr Ala Towfiq Sharif

Opponent

American Home Products Corp

Oppositions (Consolidated)

Mark (a) Sections 5(2)(b) and 5(4)(a) Mark (b) Sections 5(2)(b), 5(3) and 5(4)(a)

Result

Section 5(2)(b) - Opposition failed

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

• 1. The Hearing Officer observed that since Section 8(1) had not been invoked, the oppositions under Section 5(4) were not undermined simply because the local goodwill was owned by its subsidiaries rather than by the opponent itself.
• 2. Costs: Where a party is found to have prosecuted its application in an unsatisfactory manner the Hearing Officer is likely to show his displeasure by denying or reducing an award of costs.

Summary

The opponent sought to establish not only that it had a relevant UK reputation in the mark AHP, but that mark was even "well-known" for the purposes of the Convention, albeit unregistered. The Hearing Officer was not so persuaded, finding that whilst the Opponent's subsidiaries traded in the UK, and that it was known by its acronym AHP by some members of the public with an interest in corporate activity, the evidence did not show that a significant proportion of the relevant public, including doctors, pharmacists and ordinary customers for the relevant pharmaceutical and health care goods, would associate the mark AHP with a particular manufacturer or trader. Oppositions under Sections 5(2) and (3) therefore failed.

Oppositions under Section 5(4)(a) also failed, since no evidence of local goodwill whether by virtue of the opponent's UK subsidiary's use of the mark AHP on its products, or by parallel imports or by the presence of UK customers who purchased goods abroad from foreign subsidiaries, the mark AHP when present not being particularly prominent. (Pete Waterman v CBS United Kingdom (1993 EMLR 27) distinguished.

Despite finding that applicant's evidence as to promotion of his AHP logo was generally unreliable and misleading, and that a close business relationship between the applicant and another deponent was not initially revealed, the Hearing Officer decided there was no evidence of bad faith or intention to deceive, though the applicant was denied costs.

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