Region: Ireland

Opponents cannot win based only on earlier registrations

In <I>Buddha Brand Industry Limited v Lloyd Shoes Gmbh</I>, the hearing officer has dismissed an opposition filed by the owner of two LLOYD marks against three applications for marks including the element 'Lloyd'. The hearing officer, noting that his conclusions in this regard would set a precedent for future opposition proceedings, addressed the lack of evidence of any use put forward by the opponent in relation to its marks.

29 July 2014

Sale of 22 jewellery items insufficient to meet genuine use requirements

In <I>House of Fraser (Stores) Limited v BiBa GmbH</I>, the hearing officer has revoked the registration for the trademark BIBA in respect of all of the goods for which the mark was protected. Among other things, the hearing officer held that evidence of the sale of 22 jewellery items, in a single transaction, over a period of five years was insufficient to meet the requirements identified by the ECJ in <I>Ansul</I>.

11 July 2014

Reputation in one city not sufficient under Section 10(3) of Trademarks Act

In <I>Latif v Gulec</I>, the hearing officer has upheld an opposition against the registration of the mark THE CHARCOAL GRILL for “cafés; services for providing food and drink”. While the hearing officer was not satisfied that the opponent’s unregistered trademark THE CHARCOAL GRILL had gained sufficient reputation in the state or in a substantial part thereof, he found that the ingredients for passing off existed in this case.

30 June 2014

How much profit is an account of profit for passing off? Not all profit, says High Court

In <I>McCambridge Limited v Joseph Brennan Bakeries</I>, the High Court has reviewed the approaches to awarding an account of profit when a defendant is found liable for passing off. The court was influenced by patent and copyright cases in which courts have typically had regard to the degree of contribution to the overall return of the defendant that results from the infringement or wrongful misuse of the plaintiff’s rights.

24 June 2014

Ireland is first EU country to introduce plain packaging bill for tobacco products

Ireland has become the first EU member state to publish legislation to introduce mandatory plain packaging for tobacco products. The Public Health (Standardised Packaging of Tobacco) Bill 2014 provides that cigarettes, roll-your-own tobacco and other tobacco products cannot bear any trademarks, except a brand name or trade name and a variant name, in certain regulated positions, fonts and colours.

19 June 2014

No likelihood of confusion between HIP BABY and HIPP

In <I>Kinahan v Hipp & Co</I>, the hearing officer has dismissed an opposition by the owner of several HIPP marks, including the mark HIPP BABY SANFT, against the registration of the mark HIP BABY. Among other things, the hearing officer held that the applicant was not seeking to link its mark in any way with the marks of the opponent. He also noted that a number of grounds claimed in the notice of opposition had not been pursued and gave a word of warning to opponents.

03 June 2014

High Court sets forth 18 principles in relation to bad faith

In <I>Marie Claire Netherlands BV v The Controller of Patents, Designs and Trademarks</I>, the High Court has upheld an opposition to the registration of the trademark MARIE CLAIRE for clothing and headgear on the basis of passing off. Interestingly, the court also proposed 18 principles that can be borne in mind when determining whether an application has been made in bad faith.

24 April 2014

BMW obtains injunction against use of 'BMWCare' by independent mechanic

In <i>Bayerische Motoren Werke Aktiengesellschaft v Ronayne, Trading as BMWCare</i>, the High Court has issued an injunction restraining the defendant, an independent mechanic, from using the name BMWCare. Among other things, the court rejected the defendant’s argument that his activities were authorised by the decision of the ECJ in <i>BMW v Deenik</i>.

17 January 2014

Applicant's failure to file evidence under Rule 21 not fatal to application

In <i>Kelly v NGRID Intellectual Property Limited</i>, the hearing officer has dismissed an opposition by NGRID Intellectual Property Limited against the registration of the figurative trademark SOLARGRID. The decision is of particular importance as the hearing officer clarified that the failure by the applicant to file evidence under Rule 21 of the Trademark Rules 1996 did not lead to the application being deemed to be abandoned.

20 November 2013

No likelihood of confusion between 'bet' marks for betting services

In <i>Collegewood Street Limited v TBH Limited</i>, the hearing officer has dismissed an opposition filed by the owner of the mark BETDAQ against the registration of the mark BETPACK. Among other things, the hearing officer noted that users must set up an account online and choose a username and password in order to avail of the opponent’s services. Therefore, he did not see how a user could mistakenly enter the applicant’s site and place a bet.

21 October 2013

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