SKY BUSINESS CENTRES - 237715

• Administrative Decision Number: 237715
• opponent: BRITISH SKY BROAD-CASTING GROUP
• 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. 237715 and in the matter of an

Opposition thereto.

PAT WALSH Applicant

BRITISH SKY BROADCASTING GROUP Opponent

The Application

1. On 18 June, 2007 (the relevant date), Pat Walsh, of Sky Business Centres, 57 Clontarf Road,

Dublin 3, Ireland made application (No. 2007/01481) under Section 37 of the Trade Marks Act,

1996 (“the Act”) to register the sign,

as a Trade Mark in respect of the following services:

Class 35: Telephone answering for unavailable subscribers. Outsourcing services (business

assistance).

Class 36: Rental of offices (real estate).

Class 43: Rental of meeting rooms.

2. The application was accepted for registration and advertised accordingly under No. 237715 in

Journal No. 2088 dated 21 December, 2007.

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

on 19 March, 2008 by British Sky Broadcasting Group PLC (BSkyB), of Grant Way, Isleworth,

TW7 5QD, Middlesex, United Kingdom, in relation to all the services covered by the

application. The Applicant filed a counter-statement on 5 May, 2008 and evidence was, in due

2

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 17 May,

2012. The parties were notified on 19 June, 2012 that I had decided to uphold the opposition

and to refuse the registration of the mark. 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) of the Rules.

Grounds of the Opposition

5. In its Notice of Opposition the Opponents state that they are well known providers of satellite

television programming and related goods and services, including business services, and that

they have an established reputation and goodwill in Ireland for the term SKY. The Opponent

refers to its proprietorship of a number of Trade Marks, a summary (confined to the classes at

issue) of which is contained in Annex 1, and then raises objection to the present application

under certain sections of the Act, which I shall summarise as follows:

- Section 8(3)(b) – mark of such a nature as to deceive,

- Section 8(4)(a) – use of the mark is prohibited in the State by any enactment or rule of law or

by any provision of Community law

- Section 8(4)(b) – the application for registration was made in bad faith

- Section 10(1) – the mark applied for is identical to the earlier trade marks and is to be

registered for services identical to those for which the earlier trade marks are protected.

- Section 10(2)(a) and (b) – likelihood of confusion on the part of the public, including a

likelihood of association with the Opponent’s Trade Marks

- Section 10(3) – use of mark would take unfair advantage of, or be detrimental to, distinctive

character or reputation of the Opponent’s Trade Marks,

- Section 10(4) – the use of the mark in the State is liable to be prevented by any rule of law

protecting an unregistered trade mark or other sign

- The application should be refused in the Controller’s discretion

Counter-Statement

6. In its Counter Statement the Applicant denies each and every allegation made by the Opponent

in the Notice of Opposition. The Applicant claims that he is the proprietor of the SKY/SKY

BUSINESS CENTRES marks and since the launch of products and/or services in Ireland

3

bearing the mark in approximately 2003 the Applicant has acquired a substantial reputation

under the mark SKY/SKY BUSINESS CENTRES and in particular SKY/SKY BUSINESS

CENTRES logo.

7. Furthermore the Applicant states that the mark applied for is eminently capable of

distinguishing the goods and services of the Applicant from other undertakings and that he is

entitled to the registration of the mark by reason of the provision of Section 12 of the Trade

Marks Act, 1996 on the grounds of honest concurrent user of the mark.

Rule 20 Evidence

8. Evidence submitted by the Opponent under Rule 20 consisted of a Statutory Declaration and

supporting evidence, by way of forty-seven exhibits (Exhibit 1 to Exhibit 47), dated 7 August,

2009, of Simon Robert MacLennan, Solicitor and Head of Intellectual Property at British Sky

Broadcasting Limited, and a Statutory Declaration and supporting evidence, by way of three

exhibits (BS1 to BS3), dated 12 August, 2009, of Judy McCullagh, registered Trade Mark

Attorney, of Tomkins & Co.

9. In his declaration Mr. MacLennan chronicled the development of the BSkyB business, the main

details for the purposes of these proceedings being as follows:

(i) The Sky brand dates from 1984 with the launch of SKY Channel.

(ii) SKY Channel became available in Ireland in 1988 with 22 networks providing the

broadcasts to over 300,000 households.

(iii) In 1988 British Satellite Broadcasting (BSB) launched a rival satellite channel.

(iv) SKY Television was launched in December 1988 with the addition of SKY Movies and

SKY News to SKY Channel.

(v) In July 1989 SKY One was launched.

(vi) In November 1990 SKY Television and BSB merged and the SKY brand was used

thereafter.

(vii) In 1991 SKY Sports was launched and in 1992 BSkyB joined with the BBC in signing an

agreement for exclusive rights to provide television coverage of UK Premier League

football for 5 years at a cost of £304 million.

(viii) By June 1994 400,000 Irish cable viewers were receiving one or more SKY branded

channels in addition to many “Direct to Home” (satellite) subscribers.