AVASTAT - 224269

• Administrative Decision Number: 224269
• Date: 02 March 2007
• opponent: MERCK & CO. INC
• Section: Trade Marks Act, 1996 - 2003-2007

1

TRADE MARKS ACT, 1996

Decision in Hearing

IN THE MATTER OF an application for registration of Trade Mark No. 224269 and

in the matter of an Opposition thereto.

ROWEX LTD. Applicant

MERCK & CO. INC Opponent

Application for registration

1. On 2 May, 2002, Rowex Ltd., an Irish company of Newtown, Bantry, Co. Cork

made application (No. 2002/00937) under Section 37 of the Trade Marks Act,

1996 (“the Act”) to register the word AVASTAT as a trade mark in respect of

goods in Class 5, namely, “pharmaceutical preparations and substances”.

2. The application was accepted for registration and advertised accordingly under

No. 224269 in Journal No. 1951 on 18 September, 2002.

3. Notice of opposition to the registration of the mark pursuant to Section 43 of the

Act was filed on 16 December, 2002 by Merck & Co. Inc, a corporation organised

and existing under the laws of the State of New Jersey, United States of America

of One Merck Drive, P.O. Box 100, Whitehouse Station, New Jersey, United

States of America. The Applicant filed a counter-statement on 5 March, 2003 and

evidence was subsequently filed by the parties under Rules 20 and 21 of the Trade

Marks Rules, 1996 (“the Rules”).

4. The matter became the subject of a Hearing before me, acting for the Controller,

on 16 November, 2006 following which the Applicant requested that the

specification of goods be amended to read “prescription only pharmaceutical

preparations and substances for the treatment of hypercholesterolaemia”. That

amendment was accepted and advertised in Journal No. 2061 on 13 December,

2006 and the Opponent was notified accordingly pursuant to rule 26(1)(i). On 4