PRIMA - 147222

• Administrative Decision Number: 147222
• Date: 20 January 2003
• opponent: PRIMARK HOLDINGS PRIMARY STORES LIMITED

1

TRADE MARKS ACT, 1963

Decision in Hearing under Section 26

IN THE MATTER OF an application for registration of Trade Mark No. 147222 and

in the matter of an Opposition thereto.

SICURI CORPORATION Applicant

PRIMARK HOLDINGS

PRIMARK STORES LIMITED Opponents

1. On 19 February, 1992, SICURI CORPORATION, a corporation organised and

existing under the laws of the State of Nevada, United States of America, of 5380

S. Valley View Blvd., Suite D., Las Vegas, Nevada, 89118, United States of

America, Manufacturers and Merchants, made application (No. 92/0929) to

register

as a Trade Mark in Part A of the Register in Class 28 in respect of the following

specification of goods:

“Sporting goods, including golf, and tennis equipment

and accessories therefor.”

2. The Application was subsequently advertised as accepted for registration in Part A

of the Register under No. 147222 in Journal No. 1720 on 3 November, 1993.

3. Notice of Opposition to the registration of the mark pursuant to Section 26 of the

Act was filed on 1 June, 1994 by PRIMARK HOLDINGS of 47 Mary Street,

2

Dublin 1 and PRIMARK STORES LIMITED of 68 Knightsbridge, London

SW1X 7LR, England. The Applicant filed a counter-statement on 22 August,

1994 and evidence was, in due course, filed by the parties under Rules 37 and 38

of the Trade Mark Rules, 1963.

4. The Opposition became the subject of a Hearing before me, acting for the

Controller, on 1 October, 2002. The parties were notified on 19 May, 2003that I

had decided to dismiss the opposition and accept the mark for registration. I now

state the grounds of my decision and the materials used in arriving thereat.

5. In their Notice of Opposition the Opponents stated as follows:

(i) The first and second-named Opponents (hereinafter jointly referred to as

the Opponents) are engaged in trade in a wide range of goods, including

sports clothing and toys.

(ii) The first-named Opponent is the proprietor in the Republic of Ireland of

the Trade Marks PRIMARK and PRIMARK PRIMA which are registered

in accordance with the particulars set out in the schedule hereto.

(iii) The Trade Marks PRIMARK and PRIMARK PRIMA have been

substantially and extensively used by the first-named Opponent in the

Republic of Ireland and by the second-named Opponent in the United

Kingdom. As a result of such use, the Trade Marks PRIMARK and

PRIMARK PRIMA are extremely well known throughout the Republic of

Ireland and the United Kingdom.

(iv) Use by the Applicant of the said mark would lead to the Applicant’s goods

being passed off as, or mistaken for, the Opponents’ goods..

(v) The said mark would be disentitled to protection in a Court of Justice and

registration thereof would offend against the provisions of Section 19 of

the Trade Marks Act, 1963.

(vi) Registration of the said mark would contravene the provisions of Section

20 of the Trade Marks Act, 1963.

(vii) The Applicant is not the proprietor of the said mark and did not have at the

date of application a present and definite intention of using the said mark