FOOT ACTION opposition kicked out

In The John David Group Plc v FL Retail Operations Limited, the acting controller has dismissed an opposition filed by FL Retail Operations LLC, the owner of the FOOTACTION trademark in various countries, against the registration of the trademark FOOT ACTION in Ireland.
The John David Group Plc (JD) is a UK high street retailer of sports and leisure goods trading under the name JD Sports. JD sells branded products through a network of stores throughout the United Kingdom and Ireland, and owns the registered Community trademark FOOT ACTION.
JD applied to register the trademark FOOT ACTION in Ireland for goods and services in Classes 18, 25 and 35 of the Nice Classification. The application was opposed by FL Retail, a company which operates stores throughout the United States under the name Footaction. FL Retail maintains a website attached to the domain name '' through which it sells merchandise to customers throughout the world. Such internet sales have included sales to Irish customers.
A hearing was duly appointed, but the parties indicated they did not intend to be represented at the hearing. Therefore, the matter went for decision on the basis of the material filed only. 
According to the acting controller, the majority of the grounds of opposition set out in the notice of opposition were not supported by any evidence whatsoever. Therefore, he dismissed the opposition under those grounds without further consideration.
FL Retail raised a further ground of opposition under Section 8(4)(b) of the Trademarks Act 1996 to the effect that the application for registration was made in bad faith. However, this ground of opposition was not particularized in any way in the notice of opposition. Accordingly, the acting controller held that it did not fall to be dealt with by JD or by him. This ground of opposition appeared to be based on FL Retail’s contention that:
  • JD was aware of FL Retail’s proprietorship and use of the trademark FOOTACTION; and 
  • it was "no coincidence" that JD had adapted the trademark FOOT ACTION for use in relation to similar goods. 
The acting controller held that this was an entirely speculative allegation and was not a proper basis on which to make a charge of bad faith.
A further ground of opposition was that, under Section 11(1)(c) of the act, FL Retail’s mark FOOTACTION qualified as an earlier trademark by virtue of its entitlement to protection under the Paris Convention for the Protection of Industrial Property as a well-known trademark. The acting controller held that there was no evidence that as of the relevant date, FL Retail's trademark was well known in Ireland as being FL Retail’s mark. In his view, the materials filed reflected a level of activity that was so sporadic and paltry in nature as to be incapable, in itself, of having established FL Retail’s trademark as a well-known mark in Ireland, even as of the present date. The acting controller recalled that it is for the opponent to show that its trademark is well known in Ireland if it wishes to pursue an opposition on that basis. In the present case, FL Retail had failed to do so. 
FL Retail also grounded its opposition on Section 10(4)(a) of the act on the basis that use of JD’s trademark was liable to be prevented by virtue of a rule of law protecting an unregistered trademark or other sign used in the course of trade (eg, passing off). The acting controller held that for this ground of opposition to succeed, FL Retail had to show that its goods were known to consumers in Ireland by reference to its trademark FOOTACTION as of the relevant date, such that use of the trademark FOOT ACTION in relation to the goods or services covered by the application might be said to constitute a misrepresentation leading to damage to FL Retail. As FL Retail had failed to do so, the opposition was also dismissed on this ground.
Consequently, the acting controller allowed the mark FOOT ACTION to proceed to registration. 
Patricia McGovern, DFMG Solicitors, Dublin

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