This was in respect to 'chemical products for sanitary and medical use, medicines, pharmaceutical drugs and preparations' 'cosmetics perfumes, soaps and shampoos were applied in respect of Class 3. This application got on air in the Trade Marks Journal right next year that is January 2007.
The well reputed company that opposed the application was Lloyd's Preparations Ltd. ('Lloyd's). The point behind the opposition was that it already had a registered trade mark for 'ECZIDERM', registered in Class 5 and not only this but it was also registered for 'all use in the treatment of eczema pharmaceutical preparations and substances'. This registration had the number 1075423 and the filing date was12 June 1989 that is far older than the new application and they had made a name in the sales. In 2003 Lloyd's had also registered a corresponding trade mark in France for 'ECZIDERM'.
The first and most important point that arises is that a well reputed company which has been using a brand for years has the right to go against any other company who is trying to use their name. It was directly effecting the reputation of the brand and the company. Apart from law it is a thing of common sense that no company would ever at any cost bear the name of their company being used by others in any way.
The opposition was made on provision of the Trade Marks Act 1994. ...
It was launched long a go. Many products that had the mark ECZIDERM were regularly being exhibited at British Association of Dermatologists annual meetings. Not only this but also they were advertised in medical publications including, 'Chemist and Druggist' 'British Journal of Dermatology' and 'General Practitioner'. These were the most popular and widely read journals. If the trade mark would have been re-registered it would go against the section 3(1)(a) law.
Lloyd's had been spending approximately 250,000 on publicity and sponsorship of products over the last three years. This was not only spent on products that had the trade mark ECZIDERM but also on the use of sales representatives.
Lloyd's ECZIDERM products have been upheld straight away to doctors with the help of sales representatives and also by mailing directly. So the brand or the trade mark was not to be used again in the same contexts.
The second objection raised by opponents was that of section 3(6) - 'the application was made in bad faith'. The main reason for the rhyming trade marks was to get rapid fame of the product by using the name of other company. The evidence is that the sales of Lloyd's were made in all chief rural and urban cities all around UK. Lloyd's had already used registration of ECZIDERM as a trade mark in the UK. So this name had already earned considerable support and reputation, if the other rhyming product was launched, it would have got false fame by betrayal of people. It had earned so much fame that the mark ECZIDERM had also been entitled to protection under the Paris Convention for the quality of being well known. Hffner GmbH had probably applied for the trade mark EXIMED intentionally to take advantage of the well known repute of the previous mark