EASYCOOK - 229932

• Administrative Decision Number: 229932
• Date: 06 June 2008
• opponent: ZAHARA PUBLISHING LIMITED
• Section: Trade Marks Act, 1996 - 2008-2017

1

DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE

MARKS IN PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

BETWEEN

THE BRITISH BROADCASTING CORPORATION

Applicant

and

ZAHRA PUBLISHING LIMITED

Opponent

CONCERNING

Trade Mark Application No. 2004/01082 (229932)

EASY COOK (series of two)

Background

1. On 19 May, 2004, The British Broadcasting Corporation, a British company of

Broadcasting house, Portland Place, London W1A 1AA, United Kingdom, made

application (No. 2004/01082) under Section 37 of the Trade Marks Act, 1996

(“the Act”) to register the series of marks shown below as a trade mark in respect

of the following specification of goods and services in Classes 9, 16 and 41:

EASY COOK

Class 9: Downloadable electronic publications and printed publications in

electronically readable form.

Class 16: Paper, cardboard and goods made from these materials; printed

publications; magazines; books; pamphlets; printed guides;

2

catalogues; programmes; photographs; stationery; artists'

materials; paint brushes; instructional and teaching material;

plastic material for packaging; printing blocks; posters; cards;

postcards; greeting cards; trading cards; invitations; diaries;

calendars; photograph albums; prints; paper and plastic bags; gift

boxes; notepads; writing instruments and crayons; coasters; gift

and luggage tags; ornaments of paper, card and papier mache;

stickers; transfers; stamps; personal organisers; address books;

note books; pen and pencil holders; desk mats; embroidery,

sewing and knitting patterns; postage stamps, giftwrap.

Class 41: Provision of entertainment, education, recreation, instruction,

tuition and training both interactive and non-interactive;

production, presentation, distribution, syndication, networking and

rental of audio, video, still and moving images and data whether in

compressed or uncompressed form and whether downloadable or

non downloadable; game services; production and rental of

educational and instructional materials; publishing services

(including electronic publishing services); exhibition services;

organisation, production and presentation of shows, competitions,

contests, games, concerts and events; language teaching;

provision of language schools and language courses; provision of

information and advisory services relating to any of the aforesaid

services.

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

No. 229932 in Journal No. 2002 on 8 September, 2004.

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

Act was filed on 7 December, 2004 by Zahra Publishing Limited, an Irish

company of 19 Railway Road, Dalkey, Co. Dublin. The Applicant filed a

counter-statement on 11 March, 2005 and evidence was subsequently filed by the

parties under Rules 20, 21 and 22 of the Trade Marks Rules, 1996 (“the Rules”).

4. The opposition became the subject of a hearing before me, acting for the

Controller, on 26 March, 2008. The parties were notified on 25 April, 2008 that I

had decided to uphold the opposition and refuse registration of the series of trade

marks in respect of certain of the goods and services, namely,

Class 9 – all goods

Class 16 - Paper, cardboard and goods made from these materials; printed

publications; magazines; books; pamphlets; printed guides;