PRINCIPLES fails to prevent PRINCIPE device registration


In Principe SPA v Principles Retail Limited, the acting controller at the Irish Patents Office has dismissed an opposition against the extension into Ireland of Principe SPA's international registration for the mark PRINCIPE (and device) covering goods in Classes 18 and 25 of the Nice Classification, and services in Class 42. Principles Retail Limited (PRL) opposed the application on the basis that the PRINCIPE (and device) mark was similar to one or more of its earlier trademarks, which are registered in respect of identical or similar goods and services such that there was a likelihood of confusion on the part of the public.

The acting controller dismissed the opposition and granted the request for protection of the mark.

As regards the goods in Classes 18 and 25, the acting controller held that on an overall assessment PRINCIPLES and PRINCIPE (and device) were not confusingly similar trademarks within the context of these particular products. He found the differences between the respective trademarks as regards their distinctive features, taken together with the nature of the goods and the likely level of attention that will be paid by the average consumer in the typical purchasing scenario, obviated any likelihood of confusion that may be said to stem from the visual and phonetic similarities between the marks.

As regards the services in Class 42, Principe's services relate to design consultancy whereas PRL's mark is protected in respect of services which include design of internet webpages and related services. The acting controller held that the design service in respect of which Principe sought protection must be assumed to be directed to a relatively specialist consumer (ie, individuals and undertakings engaged in the manufacture of the relevant goods) and such persons must be expected to exercise a fair degree of discernment in the selection of service providers. Accordingly, there was no likelihood of confusion.

Patricia McGovern, DFMG Solicitors, Dublin

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