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This article was published in the December issue of PTMG’s Law, Lore & Practice
With the UK IPO having seen record numbers of trade mark applications over the past year, a steady stream of objections, oppositions and cancellation proceedings has followed. Here is a roundup of some of the UK IPO’s latest decisions on trade marks applied or registered for pharma goods and medical devices.
The subject application met with objection on the basis that the mark could deceive consumers. The examiner held that the mark would be perceived to mean that the goods applied for (which included medical masks, and cushions and gloves for medical purposes, among other items) were made from pure cotton, and so consumers would be misled if it transpired that the goods were made from other materials.
In this case the applicant was able to overcome the objection by limiting the list of goods to indicate that they are all made from cotton, but this option may of course not be suitable in all cases – e.g. if
the mark was not intended to refer to the goods, and does not accurately describe their nature. Caution therefore needs to be taken when selecting a mark to ensure that if it does refer to potential qualities of the goods, the reference is accurate (but that it also does not render the mark exclusively descriptive, which may give rise to an alternative objection).
There is also a reminder here that the use of a non-standard spelling or a misspelling of a word will often not suffice to avoid an objection based on the perceived meaning of the word. The examiner did not appear to have any doubt in this case that consumers would recognise PUR as meaning PURE.
These two unrelated decisions underline some of the difficulties in securing registrations for marks that are intended to be used as promotional slogans. The mark ‘Sex made simple.’ was applied for in relation to goods such as personal sexual lubricants in class 5 and adult stimulation aids in class 10. The mark was refused, on the basis that it fulfils a ‘purely marketing function, indicating that the goods will facilitate the simplification of sexual activity’. According to the examiner, this would preclude consumers from recognising the mark as an indicator of commercial origin.
A similar objection was raised against a subsequent application for SELFCARE IS THE NEW HEALTHCARE in class 10, with the Examiner finding that the mark would ‘merely be seen as a non-distinctive statement, informing the consumer that taking actions to improve one’s health has replaced the need for the organised provision of medical care’. However, it is interesting to note that the objection only affected the medical devices applied for – e.g. pulse oximeters and blood pressure monitors. It did not extend to the applicant’s sex toys or condoms, which the Examiner presumably felt did not have a sufficiently direct link to the perceived message behind the mark for the objection to apply.
The question is therefore whether the mark is a purely promotional statement or whether it has some distinctive character that means it can function as a trade mark. In practice, however, that distinction is often quite hard to draw.
The mark 
had been applied for in relation to a variety of goods, including ‘ultraviolet ray lamps for medical purposes’ in class 10. The application was opposed on the basis of a likelihood of confusion with earlier registrations for the mark 
covering ‘protective face masks for medical use’, amongst other goods.
The UK IPO held that there was a ‘general overlap in user and purpose’ between the term ‘ultraviolet ray lamps for medical purposes’ in the application, and ‘protective face masks for medical use’ in the registration, in that they will ‘both mostly be used by medical staff for medical purposes’.
However, this was not sufficient for the goods to be considered similar. The decision confirmed that other relevant factors for assessing similarity of goods include their physical nature, the trade channels through which they reach the market, their location within stores, and the extent to which they are in competition. As the goods did not coincide under any of these other factors, the UK IPO found them to be dissimilar.
The application was therefore granted for the goods ‘ultraviolet ray lamps for medical purposes’, with the UK IPO finding that there was no likelihood of confusion, in spite of the marks having a high level of visual and aural similarity.
The mark LANSERHOF was applied for in a number of classes, and opposed on the basis of a likelihood of confusion with an earlier registration for the mark LANSERRING.
The UK IPO held that a number of the goods and services applied for were identical or similar to the earlier goods and services. It was then necessary to determine whether the marks were similar such that there was a likelihood of confusion.
The UK IPO decided that there was no likelihood of direct confusion between the marks – i.e., consumers mistaking one for the other. The visual and aural differences caused by the different endings of each mark (HOF v RING) were too obvious to go unnoticed. However, the UK IPO went on to consider the possibility of indirect confusion – where the consumer recognises that the marks are different, but nonetheless concludes that they share a commercial source due to their having something in common.
In this regard, the UK IPO concluded that as the root of each mark, LANSER, is inherently highly distinctive, being an unusual combination of letters with no obvious meaning, the average consumer would assume that no-one else but the owner of the earlier mark would be using it in a mark. Therefore, the later mark LANSERHOF would not merely call to mind the earlier mark LANSERRING; consumers would perceive that the users of the marks are economically linked undertakings, meaning there is a likelihood of indirect confusion. This sufficed for LANSERHOF to be refused registration for the majority of the goods and services applied for.
This decision serves as a reminder that indirect confusion could still be an option even if direct confusion is ruled out. However, a mere association between the marks is not sufficient for indirect confusion; the relationship needs to be such that consumers can perceive an economic connection between the entities behind the marks.
If you would like to discuss anything in this article, you can contact the writer, or a member of our expert Trade Mark team.
Category: Latest Insights | Author: Suzanne Power | Published: | Read more
