Opposition to BIOFERT sunk by Patents Office

Ireland

In Veolia Water Operations Ireland Limited v Dublin City Council, the acting controller at the Irish Patents Office has dismissed an opposition filed against the registration of the mark BIOFERT.

Veolia Water Operations Ireland Limited (Veolia) applied to register the word BIOFERT (and device) in a stylized form as a trademark. The mark was opposed by Dublin City Council (DCC).

The acting controller dismissed the opposition. He was critical of the evidence submitted by both parties, but particularly by DCC. A previous relationship existed between the parties and the trademark in issue appeared to have been the product of a collaboration between DCC and Veolia. However, no formal agreement existed between DCC and Veolia as to the ownership of the name and trademark BIOFERT. In considering the various grounds, the acting controller decided as follows:

  • He found no enactment, rule of law or provision of Community law prohibiting the use of the trademark and accordingly rejected the opposition under Section 8(4)(a) of the Trademarks Act 1996.

  • He considered whether the application for registration had been made in bad faith. He found that the name BIOFERT was invented and settled upon by Veolia and DCC in collaboration and, in his opinion, DCC could not claim an exclusive right in it as against Veolia, and hence the application for registration could not be characterized as an attempt by Veolia to steal DCC's mark. The evidence did not point to anything like what could be called dishonesty or sharp practice on the part of Veolia in seeking to register the name. An application for registration was not made in bad faith simply by reason of the fact that the opponent did not contemplate it. Accordingly, the opposition was dismissed under Section 8(4)(b) of the act.

  • While DCC produced evidence that it had sold €482,000-worth of goods under the mark, it did not provide any corroborating material in support of the claim. The acting controller held that the position of Veolia could be seen as analogous with that of an undertaking that sources goods to a desired specification from a manufacturer and subsequently markets them under its own trademark. There was nothing to suggest that persons who are customers of Veolia understood the BIOFERT trademark to signify a connection between DCC and the goods. Therefore, he was not satisfied that DCC had shown, on the balance of probabilities, that any goodwill existing at the relevant time inured to its benefit. On this basis, he rejected the opposition under Section 10(4)(a) of the act.

  • The acting controller held that DCC had failed to show that it had any earlier rights that served as grounds to object to registration of the mark pursuant to Section 10(4)(b) of the act.

  • As regards an objection under Sections 37(2) and 42(3) that the trademark had not been used or proposed to be used, he held that such an objection was unsubstantiated.

Patricia McGovern, DFMG Solicitors, Dublin

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