PulsePro - 248819

• Date: 01 February 2016
• Administrative Decision Number: 248819
• opponent: MERCK CONSUMER HEALTHCARE LIMITED
• Section: Trade Marks Act, 1996 - 2008-2017

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DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS IN

PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

between

STEPHEN KAVANAGH (Proprietor)

and

MERCK CONSUMER HEALTHCARE LIMITED (Applicant for Invalidity)

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

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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:

Registration

Effective Date of

Registration

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