Glandex - 1045463

• Administrative Decision Number: 1045463
• Date: 29 December 2021
• opponent: Vetnique Labs LLC
• Section: Trade Marks Act, 1996 - 2018 - Current

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TRADEMARKS ACT, 1996

Decision in Hearing

IN THE MATTER OF an application for the revocation of the registration of the

International Registration designating Ireland, IR No. 1045463 and in the matter of

the registered Proprietor’s opposition thereto.

Applicant for Revocation: Vetnique Labs LLC

Proprietor: HASCO TM spólka z ograniczona odpowiedzialnoscia spólka

komandytowa

The registered Trademark

1. HASCO TM spólka z ograniczona odpowiedzialnoscia spólka komandytowa

(hereinafter “the Proprietor”) of ul. Zmigrodzka 242E, PL-51-131 Wroclaw,

Poland is the registered Proprietor of IR No. 1045463 in respect of

“Pharmaceutical products, chemical preparations for medicinal purposes,

chemical preparations for pharmaceutical purposes, hormones for medical

purposes, capsules for pharmaceutical purposes, medicines for human

purposes, pills for pharmaceutical purposes, pills for pharmaceutical use,

analgesics, anticancer preparations, antineoplastic agents, medicines containing

inhibitors, drugs reducing estrogen, drugs used to treat hormone-dependent

cancers, medicines containing of aromatase inhibitors, drugs regulating levels of

hormones, drugs used for postmenopausal women.” in Class 5.

2. The mark was designated by WIPO to Ireland on 07 May 2010 and the

publication of the registration of the mark appeared in Journal No. 2165 dated 08

December 2010

3. On 30 January 2019 Vetnique Labs LLC of 3077 Stefan CT, Lisle, Illinois

60532, United States of America (hereinafter “the Applicant”), made an

application for the revocation of the registration pursuant to the provisions of

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Section 51 of the Trademarks Act, 1996 (“the Act”) and Rule 41 of the

Trademark Rules,1996.

4. The Proprietor filed a Notice of Opposition dated 11 July 2019, an

accompanying Statutory Declaration dated 19 June 2019, of Ms Beata Maria

Peplowska, representative of the Proprietor and various exhibits labelled D1 to

D16, including licence agreements, invoices showing purchases under the

contested mark, Glandex, in Ireland, invoices showing sales under the contested

mark in Poland, marketing authorisations for the contested mark in Poland,

examples of packaging for Glandex in Polish and patient information leaflet .

5. Acting for the Controller, the Hearing Officer decided to reject the application for

revocation with the exception of “capsules for pharmaceutical purposes” and

“analgesics” and to allow the mark to remain on the Register for the following

goods in Class 5: “Pharmaceutical products, chemical preparations for medicinal

purposes, chemical preparations for pharmaceutical purposes, hormones for

medical purposes, medicines for human purposes, pills for pharmaceutical

purposes, pills for pharmaceutical use, anticancer preparations, antineoplastic

agents, medicines containing inhibitors, drugs reducing estrogen, drugs used to

treat hormone-dependent cancers, medicines containing of aromatase inhibitors,

drugs regulating levels of hormones, drugs used for postmenopausal women.”

The parties were advised of this decision on 24 July 2019.

6. The Applicant for Revocation, on 12 August 2019, advised of their wish for a

Hearing to enable the Applicant to make submissions in relation to the evidence

filed by the Proprietor and also the decision to grant a partial revocation of the

registration. A Hearing held on 12 September 2019 was attended by Mr Dermot

Doyle, representing the Controller, and Mr Paul Kelly of FRKelly, representing

the Applicant for Revocation. Following this, the Office advised the parties that

the administrative measures relating to the provisions of Rule 41(4) of the

Trademark Rules 1996 may not have been applied in their entirety in this case.

Arising from this, the Hearing Officer decided to annul his earlier decision as

advised on 24 July 2019. The Applicant was afforded the opportunity, should

they wish, to file further material in support of their application. They were also