THE BUTLER'S PANTRY - 235803

• Administrative Decision Number: 235803
• opponent: THE IRISH CHOCOLATE COMPANY 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

In the matter of an application for registration of Trade Mark No. 235753 and in the matter of an

Opposition thereto.

THE BUTLER’S PANTRY (MANUFACTURING) LIMITED Applicant

(Represented by Anne Ryan & Co.)

THE IRISH CHOCOLATE COMPANY LIMITED Opponent

(Represented by MacLachlan & Donaldson)

The Application

1. On 29 November, 2006 (the relevant date), The Butler’s Pantry (Manufacturing) Limited, an

Irish company, of 97B Morehampton Road, Donnybrook, Dublin 4, Ireland made

application (No. 2006/02684) under Section 37 of the Trade Marks Act, 1996 (“the Act”) to

register this sign,

as a Trade Mark in respect of the following goods and services:

Class: 29

Meat, fish, seafood and poultry, none being live, all food for human consumption; prepared

salads and fruit salads; pickles, relishes, preserves; jellies, jams and marmalades; fruit preserves;

fruit in syrup; pates; fillings and snack foods; prepared meals and constituents for meals; take-

away snacks, mincemeat; preserved, dried and cooked fruits and vegetables; savoury spreads;

2

dips; mousses and chilled desserts; foodstuffs for vegetarians; packaged preparations made from

such foodstuffs in the form of prepared meals or take-away snacks; edible oils, dried herbs, all

included in Class 29.

Class: 30

Coffee, coffee essences and coffee extracts; teas; cocoa; drinking chocolate; flour and

preparations made from cereals; bread and bakery products; sandwiches; pastry, pastries, cakes

and biscuits (other than biscuits for animals); desserts and puddings; non-medicated

confectionery; chocolate, chocolates and sweets; fillings; sweet spreads; ice-creams and ice

confectionery; savoury spreads; sauces; including sauces for pastas; prepared meals and

constituents for meals; pizzas; pies; mustard; spices; vinegar, chutneys, mayonnaise, salad

dressings and sauces, all included in Class 30.

Class: 43

Catering; provision of food and drink for parties; provision of take-away meals; provision of

food preparation facilities; sandwich and buffet services; sandwich bar services.

2. The application was accepted for registration and advertised accordingly under No. 235803

in Journal No. 2069 dated 04 April, 2007.

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

filed on 29 June, 2007 by The Irish Chocolate Company Limited, of Clonshaugh Industrial

Estate, Clonshaugh, Dublin 17, Ireland, in relation to “non-medicated confectionery,

chocolate, chocolates and sweets” (hereinafter referred to as the said goods). The Applicant

filed a counter-statement on 28 August, 2007 and evidence was, in due course, filed by the

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

4. The opposition became the subject of a hearing before me, acting for the Controller, on 1

April, 2010. The parties were notified on 16 April, 2010 that I had decided to dismiss the

opposition and to allow the mark to proceed to registration. I now state the grounds of my

decision and the materials used in arriving thereat in response to a request by the Opponent

in that regard pursuant to Rule 27(2) filed on 26 April, 2010.