SKYWORTH - 1273344

• Administrative Decision Number: 1273344
• opponent: Sky International AG
• Section: Trade Marks Act, 1996 - 2018 - Current

1

DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS IN

PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

In the matter of an application for registration of Trade Mark No. 1273344 and in the matter of an

Opposition thereto.

SKYWORTH GROUP COMPANY LIMITED Applicant

SKY INTERNATIONAL AG Opponent

The Application

1. On 18 November 2014 (the relevant date), Skyworth Group Company Limited (hereinafter “the

Applicant”), of Shennan Ave, Nanshan District, 518057 Shenzhen, Guangdong, China made an

application for an International Registration designating Ireland (No. 1273344) under the

Madrid Protocol to register SKYWORTH as a Trade Mark in respect of the following goods:

Class: 7

Agricultural machines; net hauling machines [fishing]; woodworking machines; papermaking

machines; diaper production machines; printing machines; machines for the textile industry;

dyeing machines; food preparation machines, electromechanical; brewing machines; cigarette

machines for industrial purposes; leather-working machines; sewing machines; machines for the

bicycle industry; computer aided carver; machines for battery industry; enamel manufacturing

machines; lamp bulbs manufacturing machines; wrapping machines; honeycomb briquette

manufacturing machines; kitchen machines, electric; washing machines; machines for

pharmaceutical industry; vulcanisation apparatus; glass working machines; electromechanical

machines for chemical industry; rolling mills; oil refining machines; mixing machines; hoists;

derricks; hammers [parts of machines]; moulding machines; fittings for engine boilers;

hydroelectric power generating equipment; clip manufacturing machines; button manufacturing

machines; machines for manufacturing electric wires and cables; hand-held tools, other than

hand-operated; optics cold processing equipment and machines; gas separating equipment;

painting machines; starters for motors and engines; control mechanisms for machines, engines

or motors; mufflers for automobile engine; pumps [machines]; valves [parts of machines];

compressed air machines; compressors for refrigerators; hydraulic couplers; connecting rods for

machines, motors and engines; speed governors for machines, engines and motors; belts for

machines; electric welding machines; washing apparatus; shoe polishers, electric; electroplating

machines; condensing installations.

Class: 9

Computers; computer memories; monitors [computer hardware]; laptop computers; notebook

computers; processors [central processing units]; USB flash drives; computer peripheral

devices; computer keyboards; mouse [computer peripheral]; electronic pocket translators;

computer software, recorded; electronic pens [visual display units]; computer game software;

electronic publications, downloadable; wireless network cards; touch screens; personal digital

assistants (PDA); time recording apparatus; cheque recording apparatus; ticket dispensers;

electronic tags for goods; lottery machines; facsimile machines; weighing machines; measures;

electronic notice boards; neon signs; portable telephones; transmitters of electronic signals;

2

radar apparatus; navigational instruments; global positioning system [GPS] apparatus; network

communication equipment; optical communication equipment; navigation apparatus for vehicles

[on-board computers]; stored program control (SPC) telephone switching equipment; television

apparatus; monitoring apparatus, electric; tape recorders; video recorders; camcorders; DVD

players; headphones; electronic teaching and learning machines; portable media players;

television cameras; electronic voice text machines; set top boxes; cameras [photography];

projection machines; projection machines for teaching purposes; surveying apparatus and

instruments; aerometers; automatic indicators of low pressure in vehicle tires [tyres]; speed

checking apparatus for vehicles; gasometers [measuring instruments]; kilometer recorders for

vehicles; meters for internal combustion engines; logs [measuring instruments]; milage

recorders for vehicles; hydrometers; audiovisual teaching apparatus; measuring devices,

electric; probes for scientific purposes; optical apparatus and instruments; materials for

electricity mains [wires, cables]; semi-conductors; integrated circuits; electronic chips; light-

emitting diode (LED); stabilized voltage supply; low-voltage power supply; fluorescent screens;

video screens; remote controllers for household purpose; optical fibers [fibres] [light conducting

filaments]; regulating apparatus, electric; electric installations for the remote control of

industrial operations; lightning conductors [rods]; electrolysers; fire extinguishers; radiological

apparatus for industrial purposes; protection devices for personal use against accidents; alarms;

spectacles [optics]; batteries, electric; animated cartoons; remote controlled car arresters,

portable; clothing, electrically heated; reversing radars; car monitors; liquid crystal displays;

apparatus to check franking.

Class: 11

Air conditioning installations; light-emitting diodes [LED] lighting apparatus; pressure cookers

[autoclaves], electric; microwave ovens [cooking apparatus]; freezers; refrigerators; ventilation

[air-conditioning] installations and apparatus; fans [air-conditioning]; solar water heaters;

bathroom heat lamp installations; disinfectant apparatus; drinking water dispensers; lamps;

lighting apparatus and installations; cooking apparatus and installations; lighting apparatus for

vehicles; germicidal lamps for purifying air; curling lamps; electric water heaters; lava rocks for

use in barbecue grills; refrigerating appliances and installations; air conditioning installations;

air conditioning apparatus; electric hair driers; heating apparatus; soap bubble and foam

generators for shows; hot water heating installations; ornamental fountains; sanitary apparatus

and installations; water purification installations; disposable sterilization pouches; radiators,

electric; lighters; nuclear reactors.

2. The notification of the designation was received from the International Bureau of the World

Intellectual Property Organisation (WIPO) on 17 November 2015. The application was accepted

for registration and advertised accordingly in Journal No. 2315 dated 7 September 2016.

3. Notice of Opposition to the registration of the mark pursuant to Section 43 of the Act was filed

on 21 October 2016 by Sky International AG (hereinafter “Sky” or “the Opponent”) of

Stockerhof, Dreikonigstrasse, 31a, CH-8002 Zurich, Switzerland, in relation to all the goods

covered by the application. The Applicant filed a counter-statement on 26 January 2017 and

evidence was, in due course, filed by the parties under Rules 20, 21 and 22 of the Trade Marks

Rules, 1996 (“the Rules”).