TAKEDA GMBH V ACTEGY LIMITED [2014] ATMO 38

Takeda GmbH relied on its prior REVESTIVE trade mark to partially succeed in an opposition against Actegy Limited’s application for REVITIVE.

The REVITIVE application covered a range of goods in Classes 3, 5, 9, 10 and 25. Included amongst those goods, according to the opponent, was an overlap with the Class 5 ‘pharmaceutical preparations’of the opponent’s prior mark. Specifically, the opponent claimed an overlap in relation to Classes 3, 5 and 10 of the applicant’s mark.

The Hearing Officer agreed that there was an overlap in relation to the Class 3 and 5 goods of the applicant’s trade mark. However, the Hearing Officer did not agree that such an overlap existed in relation to the Class 10 goods of the applicant and the Class 5 goods of the opponent.

Having established that there was an overlap in the goods in Classes 3 and 5, the Hearing Officer turned his attention to the issue of deceptive similarity. On this point, the Hearing Officer noted visual and aural similarities between the trade marks, as well as the fact that both marks were invented words with differing possible meanings to be found by consumers. However, on balance, the Hearing Officer was satisfied that the similarities between the marks would be likely to lead to consumer deception or confusion.

The application was refused in relation to Classes 3 and 5.

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