Administrative Decision Number157500
Date20 January 2003
Decision in Hearing under Section 26
IN THE MATTER OF an application for registration of Trade Mark No. 157500 and
in the matter of an Opposition thereto.
1. On 27 January, 1993, HARTSTONE IRELAND LIMITED, an Irish company of
Unit 8/9 Bellevue Industrial Park, Finglas, Dublin 11, Republic of Ireland,
predecessors in title of the Applicant, made application (No. 93/0327) to register
the words “MARIE CLAIRE” as a Trade Mark in Part A of the Register in Class
25 in respect of a specification of goods that was amended in the course of the
examination of the application to read as follows:
“hosiery; stockings; socks, pantyhose, tights and
underwear; lingerie; sleeping garments; knitted wear”
2. The Application was subsequently advertised as accepted for registration in Part A
of the Register under No. 157500 in Journal No. 1753 on 8 February, 1995.
3. Notice of Opposition to the registration of the mark pursuant to Section 26 of the
Act was filed on 10 July, 1995 by MARIE-CLAIRE ALBUM, a French Company
of 11 bis rue Boissy d’Anglas, 75008 Paris, France. The Applicant filed a
counter-statement on 14 March, 1996 and evidence was, in due course, filed by
the parties under Rules 37, 38, 39 and 40 of the Trade Mark Rules, 1963.
4. The Opposition became the subject of a Hearing before me, acting for the
Controller, on 27 June, 2002. The parties were notified on 13 January, 2003 that I
had decided to uphold the Opposition and to refuse registration of the mark. I
now state the grounds of my decision and the materials used in arriving thereat.
5. In its Notice of Opposition the Opponent stated as follows:
(i) We have for many years and earlier than January 27, 1993, traded and
have a substantial reputation under the Trade Mark MARIE CLAIRE.
(ii) We are the Proprietor of a Trade Mark Registration with the following
T. Mark Reg. No. Date Class Journal Page
MARIE 126216 08/01/88 16 1590 671
(iii) Our Trade Mark denotes and has long denoted both to the trade and the
public, goods sold by us and distinguishes and has long distinguished such
goods from the goods of other merchants and traders.
(iv) The proposed use of the Trade Mark which the Applicant has applied to
register is calculated to deceive and cause confusion and is otherwise
disentitled to protection in a Court of law and in accordance with the
provisions of Section 19 of the Trade Marks Act, 1963, should be refused
(v) The said Trade Mark which the Applicant has applied to register is
identical or so nearly resembles our Trade Mark as to be likely to deceive
or cause confusion to our Trade Mark which is already on the Register. In
accordance with Section 20 of the Trade Marks Act, 1963, registration of
the Trade Mark should be refused registration (sic).
(vi) The said Trade Mark which the Applicant has applied to register is
calculated to deceive and to lead to the Applicant’s goods being passed-off
or mistaken for goods sold by us and in which we trade as manufacturers
and merchants.
(vii) There exists a likelihood of confusion on the part of the public which
includes the likelihood of association with our Trade Mark.
(viii) Our Trade Mark has such a reputation in the State and the use of the
MARIE CLAIRE Trade Mark without due cause would take unfair
advantage of, or be detrimental to, the distinctive character or the repute of
our Trade Mark.

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