TOMMY SPORTS - 211780

• Administrative Decision Number: 211780
• Date: 25 May 2006
• opponent: ARNOTTS LTD
• Section: Trade Marks Act, 1996 - 2003-2007

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TRADE MARKS ACT, 1996

Decision in Hearing

IN THE MATTER OF an application for registration of Trade Mark No. 211780 and

in the matter of an Opposition thereto.

O.D.C. ENTERPRISES LTD.1 Applicant

TOMMY HILFIGER LICENSING INC. Opponent

The application

1. On 5 March, 1999, Goodstock Ltd., of Unit 8 K.C.R. Industrial Estate, Kimmage,

Dublin 12, predecessor in title of the Applicant, made application (No.

1999/00797) under Section 37 of the Trade Marks Act, 1996 (“the Act”) to

register the words TOMMY SPORTS as a Trade Mark 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:

“Clothing for men, women and children; Shoes, boots and trainers for

men, women and children.”

2. The application was accepted for registration and advertised accordingly under

No. 211780 in Journal No. 1878 on 1 December, 1999. The advertisement of the

mark carried a noting to the effect that the Applicant disclaimed any right to the

exclusive use of the word “sports”.

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

Act was filed on 29 February, 2000 by Tommy Hilfiger Licensing Inc., a

corporation organised and existing under the laws of the State of Delaware,

United States of America, of 913 N. Market Street, Wilmington, Delaware 19801,

United States of America. The Applicant filed a counter-statement on 26 May

1 of 42 Morehampton Road, Donnybrook, Dublin 4

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2000 and evidence was, in due course, filed by the parties under Rules 20, 21, 22

and 23 of the Trade Marks Rules, 1996 (“the Rules”).

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

Controller, on 14 March, 2006. The parties were notified on 24 April, 2006 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.

Notice of Opposition

5. In its Notice of Opposition the Opponent says that it has, for many years, carried

on business as manufacturer and merchant of, inter alia, clothing, footwear and

headgear. It says that it is the proprietor of the Irish and Community Trade Marks

listed in Appendix I, which it has extensively used in connection with the

aforesaid goods. It then specifies its grounds of opposition against the present

application, namely, that the application offends against the provisions of Sections

6, 8, 10 and 37 of the Act for the following reasons:

- that the mark is identical with the Opponent’s marks and is to be registered for

goods that are identical with those for which the Opponent’s marks are

protected;

- that the mark is identical with or similar to the Opponent’s marks and is to be

registered for goods that are identical with or similar to those for which the

Opponent’s marks are protected, such that there exists a likelihood of

confusion on the part of the public;

- that the mark is identical with or similar to the Opponent’s marks and, even if

it is to be registered for goods that are not similar to those for which the

Opponent’s marks are protected, its use would take unfair advantage of, or be

detrimental to, the distinctive character or reputation of the Opponent’s marks;

- that the mark is not capable of distinguishing the Applicant’s goods from those

of other undertakings;

- that the mark is devoid of any distinctive character and consists exclusively of

a sign or indication that may serve to designate the kind, intended purpose or

other characteristics of the relevant goods;