Wartner - 250032

• Date: 09 August 2016
• Administrative Decision Number: 250032
• opponent: Wartner Europe B.V.
• 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 the registration of Trade Mark No. 250032 and in the

matter of an Opposition thereto.

YouMedical B.V. Applicant

Wartner Europe B.V. Opponent

The Application

1. On 5 November, 2013 YouMedical B.V. (hereinafter YouMedical), of Rijnsburgstraat 9-

11, 8th Floor, 1059 AT Amsterdam, The Netherlands made application (No. 2013/02057)

under Section 37 of the Trade Marks Act, 1996 (“the Act”) to register WARTIE as a trade

mark in respect of “Cosmetic preparations for body and skin care; disinfectant soaps” in

Class 3, and “Pharmaceutical preparations for body and skin care; including

pharmaceutical products for dermatological use, also intended for treatment of external

swelling of the skin, including warts, disinfectants for hygienic use” in Class 5.

2. The Applicant claimed and was granted a priority date on foot of an earlier Benelux

application No. 1268592 dated 21 May, 2013. Accordingly, this earlier date is the relevant

date for the purposes of these proceedings.

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

was filed on 26 May, 2014 by Wartner Europe B.V. (hereinafter Wartner) of Keileweg 8,

NL-3029 BS Rotterdam, The Netherlands. The Applicant filed a counter-statement on 22

August, 2014 and evidence was then filed under Rules 20, 21 and 22 of the Trade Mark

Rules, 1996 (“the Rules”). Both parties attended a Hearing of the matter on 16 February,

2016.

4. Acting for the Controller, I decided to uphold the opposition and to refuse to allow the

application to proceed to registration in respect of all goods. The parties were informed of

my decision by way of letter dated 1 March, 2016. I now state the grounds of my decision

and the materials used in arriving thereat in response to a request by the Opponent in that

regard pursuant to Rule 27(2) of the Rules.

2

Grounds of the Opposition

5. In its Notice of Opposition the Opponent identifies itself as a producer, for many years, of

pharmaceutical preparations, including anti-wart products. The Opponent offers wart,

verruca, corn and nail fungus products and related goods under the name WARTNER, and

is considered to be the number one anti-wart brand in the world. The Opponent is the

Proprietor of International Trade Mark Registration No. 0944700 WARTNER which

designates Ireland and European Union Trade Mark Registration No. 006380661

WARTNER, both of which are registered in respect of goods in Classes 3, 5, 8 and 10, as

detailed in the table below.

International

Registration

0944700

Class 3: Bleaching preparations and other substances for laundry use;

cleaning, polishing, scouring and abrasive preparations; soaps;

perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations

for medical purposes; dietetic substances adapted for medical use, food

for babies; plasters, materials for dressings; teeth filling material, dental

wax; disinfectants; preparations for destroying vermin; fungicides,

herbicides.

Class 8: Hand tools and implements (hand-operated); cutlery; side arms,

other than firearms; razors.

Class 10: Surgical, medical, dental and veterinary apparatus and

instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture

materials.

European

Union Trade

Mark

Registration

006380661

Class 3: Bleaching preparations and other substances for laundry use;

cleaning, polishing, scouring and abrasive preparations; soaps;

perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations

for medical purposes; dietetic substances adapted for medical use, food

for babies; plasters, materials for dressings; material for stopping teeth,

dental wax; disinfectants.

Class 8: Hand tools and implements (hand operated); cutlery; side arms;

razors.

Class 10: Surgical, medical, dental and veterinary apparatus and

instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture

materials.

6. The Opponent then raises objection to the present application under Sections 8 and 10 of

the Act, which I shall summarise as follows: