PulsePro - 248819

Date01 February 2016
Administrative Decision Number248819
SectionTrade Marks Act, 1996 - 2008-2017
concerning Trade Mark No. 248819
The registered trade mark
1. STEPHEN KAVANAGH, of Beechgrove, Ferrybank, Arklow, Co. Wicklow, Ireland is the
registered proprietor of the Trade Mark PulsePro (“the said mark”), which is registered in
class 5 in respect of Amino acids for medical purposes; vitamin preparations.
The application for registration of the mark was filed on 19 April, 2013 and, by virtue of
Section 45(3) of the Act, the mark is registered as of that date. The application was published
for opposition purposes in Journal No. 2231 dated 19 June, 2013 and the registration of the
trade mark was published in Journal No. 2242 on 20 November, 2013.
Application for declaration of invalidity
2. On 23 December, 2013, MERCK CONSUMER HEALTHCARE LIMITED of Hedon Road,
Marfleet, Hull, HU9 5NJ, United Kingdom made an application under Section 52 of the
Trade Marks Act, 1996 (“the Act”) for a Declaration of Invalidity of the said mark and
included with the application a statement of the grounds on which it was made. On 11 April,
2014 the Proprietor filed a Counter Statement and evidence was, in due course, filed by the
parties under Rules 20, 21 and 22 of the Trade Marks Rules, 1996 (“the Rules”).
3. Both parties filed written submissions in lieu of attending a hearing in the matter and both
parties filed submissions in reply to the other party’s written submissions. Acting for the
Controller, I decided to grant the application for invalidity on the grounds that the registration
of the said mark offended against Section 10 of the Act. The parties were informed of my
decision by way of letter dated 7 December, 2015. I now state the grounds of my decision and
the materials used in arriving thereat in response to a request by the Applicant in that regard
pursuant to Rule 27(2) of the Trade Mark Rules 1996, filed on 4 January, 2016.
Grounds of the Application
4. The Applicant grounds its application on the provisions of Sections 8 and 10 of the Act and
on the claim that the registration of the said mark is contrary to Council Directive No. 89/104
to approximate the laws of the Members States relating to trade marks. As regards Section 8,
the Applicant claims the said mark should be declared invalid to the extent that its use is
prohibited in the State by an enactment or rule of law or by a provision of Community law
including any rule of law protecting an unregistered trade mark; though the Applicant fails to
identity what specific enactment or rule of law the registration of the said mark offends
against. The Applicant also fails to particularise why the registration of the said mark is
contrary to Council Directive No. 89/104. Accordingly, and without further ado, I must reject
the application on these grounds.
5. In reality the grounds upon which the application is based are centred on Section 10 of the
Act and fundamentally relate to the Applicant’s proprietorship of the following Trade Mark
Registrations, all consisting solely of the single word PULSE, and the existence of a
likelihood of confusion as between these marks and the said mark:
Effective Date of
Class & Goods
Irish Registration
No. 127085
12 January 1988
Class 5: Infants' and invalids' foods;
pharmaceutical preparations; food supplements
included in Class 5.
Irish Registration
No. 127086
12 January 1988
Class 29: Fish oils and derivatives thereof, all
included in Class 29.
Community Trade
Mark No. 3927704
12 July 2004
Class 5: Pharmaceutical and medicinal
preparations and substances; nutritional
supplements; vitamins; minerals and mineral
salts; preparations consisting of vitamins and/or
minerals; medicinal herbs; herbal preparations;
fish oils and derivatives thereof for use as dietary
supplements and for pharmaceutical and medical
purposes; cod liver oil.
Class 29: Nutritional supplements; edible oils
and edible fats; foodstuffs containing oils or fats.
Notice of Opposition
6. In its Notice of Opposition the Proprietor denies all the claims made by the Applicant in the
Statement of Grounds. The Proprietor also denies that the Applicant’s PULSE trade marks

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