Goodwill in unused mark enough to deny FARMACIA registration

An appointed person of the UK Patent and Trademarks Office has affirmed that a trademark owner may retain enough goodwill in a trademark to invoke it against a later trademark applicant, even if the mark owner has ceased using it before the later application is filed.

Farmacia Chemists Limited, a UK company, applied in 2000 to register as a trademark the word and device mark FARMACIA URBAN HEALING for, among other things, toiletries and cosmetics, herbal remedies, nutritional products, vitamins, minerals, medical clinics and surgeries. Pharmacia AB, a subsidiary of Pfizer Inc, opposed this application on the basis of its UK registration for PHARMACIA for pharmaceuticals and various medical products and equipment. Pharmacia had used its PHARMACIA mark in the United Kingdom until 1995, when it merged with another pharmaceutical firm called Upjohn and used the PHARMACIA & UPJOHN trademark instead.

A hearing officer at the Trademarks Registry rejected the opposition for all goods not similar to Pharmacia's and which were not likely to be confused with that company's products, since Pharmacia had not established that it enjoyed a reputation in its PHARMACIA trademark in 2000. Accordingly, it could not show that it had a reputation in its mark or that it could stop Farmacia using its trademark by suing for passing off. He based this finding on the facts that (i) Pharmacia had not used the PHARMACIA mark on its own between 1995 and 2000, and (ii) PHARMACIA had in any event only been used as a secondary mark. Pharmacia appealed.

The appointed person allowed the appeal in part. He first ruled that a trader may retain the goodwill attached to its business even when it ceases to carry on that business, so long as some goodwill is retained. Pharmacia had goodwill in PHARMACIA for its pharmaceutical business by 1995: that goodwill did not become abandoned when the trademark PHARMACIA & UPJOHN was used between 1995 and 2000. Accordingly, if another pharmaceutical company were subsequently to start using the trademark PHARMACIA, Pharmacia would have been able to prevent such activity by an action for passing off.

However, the appointed person noted that the ability to sue for passing off would not prevent the registration of FARMACIA URBAN HEALING for goods such as aromatherapy preparations, deodorants and air fresheners. Pharmacia had never sold such goods and they were different in nature to pharmaceuticals. The respective goods had different uses, were not in competition with each other and were likely to be sold in different areas of a shop. Moreover, Farmacia had sold those goods for many years without any confusion coming to light. The use of FARMACIA for the provision of medical and clinical services would however be likely to lead members of the public and the medical profession to conclude that such services were the services of, or at least were connected with, Pharmacia. Since these services were closely connected with Pharmacia's core pharmaceuticals business and the providers of such services were likely to be in close contact with pharmaceutical companies, the appointed person held that there was a likelihood of confusion if both companies used such similar names.

Jeremy Phillips, Slaughter and May, London