Merck KGaA v Fournier Industrie Et Sante

Merck KGaA (the applicant) sought to register trade mark application no 969567. Fournier Industrie Et Sante (the opponent) opposed this application. The dispute concerned the likelihood of deception or confusion arising from the proposed trade mark, particularly in the context of pharmaceuticals.

The central legal issue before the Senior Examiner was whether the applicant's proposed trade mark would be likely to deceive or cause confusion, as contemplated by section 44 of the relevant legislation. This required an assessment of whether a reasonable number of persons would have sufficient cause to wonder whether the goods in question originated from the same trade source.

The Senior Examiner reasoned that while healthcare professionals are less prone to prescribing or dispensing errors than the general public, there remained a real danger that the proposed trade mark would be taken to indicate goods from the same trade source. This was particularly so if the pharmaceuticals were identical. The Examiner applied the threshold test that the opposition ground is made out if there is a likelihood of deception or confusion, not necessarily that it will occur. The Examiner was satisfied that even healthcare professionals, upon hearing of one product and then the other, were likely to be initially confused as to the origin of the goods.

Consequently, the Senior Examiner found that the section 44 ground of opposition had been made out and refused to register the trade mark application, subject to any appeal.