In a Halaxy Far, Far Away…

United Kingdom

UK Case Summary: HALAXY v HELAXY

The trade marks HALAXY v HELAXY were (unsurprisingly) found to be similar by the UK IPO resulting in a partially successful opposition for ACN PTY Ltd (the “Opponent”), owner of a global platform for health practitioners and patients. 

Whilst there was some clear overlap in specifications, the Opponent argued that its rights in healthcare and medical services (class 44) would be complementary to goods such as chemicals (class 1) or medical/veterinary apparatus (class 10), albeit the uses and nature of use are different. 

The decision is another great example of the power of a service class, and a reminder to think outside of the box with your specification drafting for your clients / your business.

Similarity of Marks

HALAXY (the “Halaxy Trade Mark”) was registered in October 2020 including services relating to healthcare and medical services, as well as software related goods in class 9.  Along comes HELAXY (the “Helaxy Application”) applying for various goods and services in classes 1, 5, 9, 10 and 42, largely covering medical and veterinary purposes.

The opposition was based on likelihood of confusion and reputation.  Insufficient evidence was filed to support the claim for reputation or enhanced distinctiveness, but HALAXY was found to have a high degree of inherent distinctiveness.

The average consumer for the purposes of comparing the goods and services was professionals in the medical/veterinary/scientific sector.  As professionals, it was found that they would take care in selecting certain goods and services before committing to a purchase, and a high degree of attention was likely to be paid.

Comparison of goods and services

In comparing the goods and services, the following considerations were applied:

(a) uses of the respective goods or services;

(b) users of the respective goods or services;

(c) nature of the goods or acts of service;

(d) respective trade channels through which the goods or services reach the market;

(e) whether the goods are in competition with each other or complimentary.

In respect of the goods and services being complementary, it has been held that there must be a close connection between the goods and services in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for those goods lies with the same undertaking[1].  This can even occur where the nature and purpose of the respective goods and services is different such as chickens against transport services for chickens[2].

Leaving chickens aside, “healthcare services” (class 44) was found to be dissimilar against “chemical substances for research” (class 1) – here the main decider being the purpose behind a registration in Class 1 – and that Class 1 is for purposes other than for medical or veterinary use.  Also dissimilar were the services of "medical research” (Class 42) and “scientific apparatus and instruments [none of the aforementioned intended for use in the fields of medical practice management and medical practitioner databases]” (Class 9). Just because scientists use scientific apparatus, this doesn’t make them complimentary says the Hearing Officer.  It's possible that the exclusionary language here also fed into the Hearing Officer’s multi-factoral assessment, but this doesn’t get mentioned specifically in the decision.  The relevant test is that the goods must be important for, or indispensable to, the services in such a way that the average consumer is likely to believe that they come from the same undertaking.

In applying the above conditions, the UK IPO found that the contested goods and services were either identical or similar to a low-medium/medium degree in classes 5, 9, 10 and 42.  For full analysis, see the table below.

Conclusion

One of the factors weighing heavily in favour of the Opponent was the fact that the Halaxy Trade Mark was found to be highly distinctive for medical and healthcare services.  So, encourage your client’s, marketing companies and brand developers to keep this in mind, and move away from those semi-descriptive and allusive trade marks.

Comparison of specification:

Opponent’s Specification for HALAXY

Applicant’s specification for HELAXY

Comments

Class 42: Health and medical research services, including medical research services relevant to all medical practice areas, including veterinary services

Class 44: Health care and medical services.

Class 1: Chemical and biological substances, in particular diagnostics, for use in industry and for scientific and research purposes, in particular for in vitro use.

Dissimilar: the Opponent argued that the Applicant’s class 1 goods would be complementary to its “healthcare and medical services” or used part of/or be the outcome of its “health and medical research services…..”, it was deemed the goods were dissimilar.

Goods listed in class 01 are, by virtue of being in that particular class, for purposes other than for medical or veterinary use (goods that are for medical or veterinary use are proper to class 5).

Class 44: Health care and medical services

 

Class 5: Chemical and biological substances, in particular diagnostics, for use in industry and for scientific and research purposes, in particular for in vitro use.

Similar:

The Applicant’s goods in class 5 are for the purposes of medical and veterinary use.  As such, there is a similarity between these goods and the Opponent’s “healthcare and medical services”. 

Whilst the nature and method of use of these goods and services is not the same, the average consumer may believe they come from the same undertaking and are therefore complementary.

Class 42: Health and medical research services, including medical research services relevant to all medical practice areas, including veterinary services

Class 44: Health care and medical services

Class 9: Scientific apparatuses and instruments for laboratory use; none of the aforementioned is intended for use in the fields of medical practice management and medical practitioner databases.

 

Dissimilar:

The decision noted that just because scientists may use scientific apparatus and instruments does not satisfy the test for complementarity in trade mark law.  The relevant test is that the goods must be important for, or indispensable to, the services in such a way that the average consumer is likely to believe that they come from the same undertaking.  Nor given the ordinary meaning of the Opponent’s services, would they likely be producing scientific apparatus and instruments.

 

Class 09: Downloadable computer software

Class 9: Software programs for operation and maintenance of scientific apparatuses and instruments for laboratory use in the field of medical and veterinary diagnostics, in particular electrophoretic apparatuses, homogenizers, spectrophotometers and laboratory robots; software programs for creating experimental profiles, providing experimental reports and reports of apparatus performance verification in the field of medical and veterinary diagnostics; software programs for analysing, displaying and visualizing experimental data and biological data in the field of medical and veterinary diagnostics; none of the aforementioned is intended for use in the fields of medical practice management and medical practitioner databases.

Similar:

It was held that all of the Applicant’s software goods would fall within the Opponent’s goods in class 9, given that the goods designated by the earlier mark are included in a more general category[3]

Class 42: Health and medical research services…..

Class 10: Medical and veterinary apparatuses and instruments, in particular apparatuses for diagnostics; apparatuses and instruments for the conducting, monitoring and evaluating of diagnostic examinations for medical and veterinary purposes.

Similar:

The Applicant’s class 10 goods would be used for carrying out its services or be the product of its services.

It was found that although the respective nature and purpose of these goods and services is not the same, the respective users (i.e., scientists, healthcare professionals) and trade channels may be the same or overlap. The applicant’s goods in class 10 may also be important for the provision of the opponent’s ‘healthcare and medical services’ in such a way that the average consumer may believe that the respective goods and services come from the same source.

 

Class 42: Health and medical research services……

Class 42: Scientific and technology services and research services in the field of medical and veterinary diagnosis; none of the aforementioned is intended for use in the fields of medical practice; consultancy services for scientific, technological, and research purposes, including consultancy services for laboratory testing, in the field of medical and veterinary diagnostics; none of the aforementioned is intended for use in the fields of medical practice management and medical practitioner databases.

Similar:

The Applicant’s term “scientific…” would be intended for use in the fields of medical practice management and medical practitioner databases and identical to the “health and medical research services” of the opponent.

In respect of the applicant’s “technology” services, it was found that an undertaking carrying out the opponent’s medical research services could use that research to develop new technology.  Whilst the respective nature and purpose is not the same, the Class 42: Scientific and technology services and research services in the field of medical and veterinary diagnosis; none of the aforementioned is intended for use in the fields of medical practice

Class 9: Downloadable computer software

Class 42: Development of software programs for the operation and maintenance of electrophoretic apparatuses, homogenizers, spectrophotometers and laboratory robots in the field of medical and veterinary diagnostics; development of software programs for creating experimental profiles, providing experimental reports and reports of apparatus performance verification in the field of medical and veterinary diagnostics, in particular for in vitro diagnostics; development of software programs for analysing, displaying and visualizing experimental data and biological data in the field of medical and veterinary diagnostics, in particular for in vitro diagnostics; none of the aforementioned is intended for use in the fields of medical practice management and medical practitioner databases

Similar:

Although the nature, method of use and purpose is not the same, the users of these goods and services would be the same and the trade channels are likely to be the same or overlap.

 

[1] Boston Scientific Ltd v OHIM Case T- 325/06

[2] Sanco SA v OHIM Case T-249/11

[3] Gérard Meric v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM Case T-133/05)