ZOLDEM - 226382

• Administrative Decision Number: 226382
• Date: 20 July 2007
• opponent: SANOFI-SYNTHELABO
• Section: Trade Marks Act, 1996 - 2003-2007

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TRADE MARKS ACT, 1996

Decision in Hearing

IN THE MATTER OF an application for registration of Trade Mark No. 226382 and

in the matter of opposition thereto.

MCDERMOTT LABORATORIES LIMITED

t/a GERARD LABORATORIES Applicant

SANOFI-SYNTHELABO Opponent

Application for registration

1. On 4 February, 2003, McDermott Laboratories Limited, trading as Gerard

Laboratories, an Irish company of Unit 35, Baldoyle Industrial Estate, Baldoyle,

Dublin 13, made application (No. 2003/00200) under Section 37 of the Trade

Marks Act, 1996 (“the Act”) to register the word ZOLDEM 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. 226382 in Journal No. 1969 on 28 May, 2003.

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

Act was filed on 27 August, 2003 by Sanofi-Synthelabo, a corporation organised

under the laws of France of 174 avenue de France, 75013 Paris, France. The

Applicant filed a counter-statement on 24 November, 2003 and evidence was

subsequently filed by the parties under Rules 20, 21, 22 and 23 of the Trade

Marks Rules, 1996 (“the Rules”).

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

on 26 April, 2007. The parties were notified on 22 May, 2007 that I had decided

to dismiss the opposition and to allow the mark to proceed to registration. I now

state the grounds of my decision and the materials used in arriving thereat in

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response to a request filed by the Opponent on 8 June, 2007 pursuant to Rule

27(2) of the Rules.

Scope of the opposition

5. Unlike most oppositions that are filed against the registration of trade marks, the

opposition in this case is not based on the Opponent’s claim to an earlier trade

mark or other earlier right with which the mark applied for is claimed to be in

conflict. While such a claim is contained in the notice of opposition filed and

reference is made therein to the Opponent’s Registered Trade Mark AMBIEN1,

that mark is clearly not similar to the mark applied for and could not ground an

objection to the present application on so-called relative grounds. That pillar of

the Opponent’s case could not have succeeded and, along with some other

grounds cited in the notice of opposition, which do not require separate mention, it

was formally abandoned at the hearing of the matter.

6. The Opponent’s case is, rather, that the trade mark applied for, ZOLDEM, is

confusingly similar to the International Non-Proprietary Name (INN) zolpidem

and that the application is therefore open to objection under the following Sections

of the Act:

o Section 8(1)(b) – trade mark devoid of any distinctive character,

o Section 8(1)(c) – trade mark designates the nature of the goods,

o Section 8(3)(a) – trade mark contrary to public policy,

o Section 8(3)(b) – trade mark of such a nature as to deceive the public,

o Section 8(4)(a) – use of trade mark prohibited by law,

o Section 8(4)(b) – application for registration made in bad faith.

1 No. 149250 registered for goods in Class 5 as of 29 May, 1992