LEXAM - 235753

• Date: 26 February 2010
• Administrative Decision Number: 235753
• opponent: NOVARTIS AG
• Section: Trade Marks Act, 1996 - 2008-2017

1

DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE

MARKS IN PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

In the matter of an application for registration of Trade Mark No. 235753 and in the matter

of an Opposition thereto.

PINEWOOD LABORATORIES LIMITED Applicant

(Represented by Anne Ryan & Co.)

NOVARTIS AG Opponent

(Represented by Tomkins & Co.)

The Application

1. On 31 January, 2007, Pinewood Laboratories Limited, an Irish company, of 1 M50

Business Park, Ballymount, Dublin 24, Ireland made application (No. 2007/00250) under

Section 37 of the Trade Marks Act, 1996 (“the Act”) to register the word “LEXAM” as a

Trade Mark in respect of “pharmaceutical preparations and substances in Class 5”.

2. The application was accepted for registration and advertised accordingly under No.

235753 in Journal No. 2069 dated 04 April, 2007.

3. Notice of Opposition to the registration of the mark pursuant to Section 43 of the Act

was filed on 29 May, 2007 by Novartis AG, of Lichstrasse 35, 4002 Basel, Switzerland.

The Applicant filed a counter-statement on 20 August, 2007 and evidence was, in due

course, filed by the parties under Rules 20 and 21 of the Trade Marks Rules, 1996 (“the

Rules”).

Original Decision

4. The matter became the subject of a Hearing before Mr. Tim Cleary, acting for the

Controller, on 23 April, 2009. The parties were notified on 13 May, 2010 that Mr.

Cleary had decided to dismiss the opposition and to allow the application to proceed to

registration.