THE MONTE CARLO - 240755

• Administrative Decision Number: 240755
• opponent: SOCIÉTÉ ANONYME DES BAINS DE MER ET DU CERCLE DES ENTRANGERS
• Section: Trade Marks Act, 1996 - 2008-2017

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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. 240755 and in the matter of

an Opposition thereto.

T.M.R. Restaurants Limited Applicant

Société Anonyme Des Bains De Mer Et Du Cercle Des Etrangers Opponent

The Application

1. On 7 January, 2009, T.M.R. Restaurants Limited, an Irish company, of 11-13 Glaslough

Street, Monaghan, County Monaghan, Ireland made application (No. 2009/00015) under

Section 37 of the Trade Marks Act, 1996 (“the Act”) to register the sign below as a trade

mark in respect of “Meat, fish, poultry and game; meat extracts; preserved, frozen, dried

and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products;

edible oils and fats” in Class 29 and “Services for providing food and drink” in Class 43.

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

240755 in Journal No. 2122 dated 15 April, 2009.

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

filed on 3 July, 2009 by Societe Anonyme Des Bains De Mer Et Du Cercle Des Etrangers,

of Place du Casino, MC-98000, Monaco. The Applicant filed a counter-statement on 16

September, 2009 and evidence was, in due course, filed by the parties under Rules 20, 21

and 22 of the Trade Marks Rules, 1996 (“the Rules”). Both parties filed written

submissions in lieu of attending a hearing in the matter and both parties filed submissions

in reply to the other party’s written submissions.

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4. Acting for the Controller, I decided to dismiss the opposition and to allow the application

to proceed to registration. The parties were informed of my decision by way of letter dated

7 February, 2013. I now state the grounds of my decision and the materials used in

arriving there at in response to a request by the Opponent in that regard pursuant to Rule

27(2) of the Trade Mark Rules 1996, filed on 15 February, 2013.

Grounds of the Opposition

5. In its Notice of Opposition the Opponent refers to its proprietorship of Community Trade

Mark Registration No. 007300064, MONTE-CARLO (the “MONTE-CARLO mark”),

which is registered as of 9 October, 2008 in Class 41 in respect of “Arranging and

conducting of colloquiums, seminars, conferences and receptions.” and in Class 43 in

respect of “Bar services, restaurants, food and drink catering; hotels providing seminar

rooms and reception rooms, hotel reservations; on-line reservations on an Internet portal

for commercial services relating to hotels, restaurants, seminar and reception rooms.”

and International Trade Mark No. 000948341, (the MONTE

CARLO logo mark”), designating the European Union, with a registration date of 21

August, 2007, in respect of goods and services, detailed at Annex 1, in 42 of the 45

classes of the Nice Classification; and then raises objection to the present application

under various Sections of the Act, which I shall summarise as follows:

- Section 8(1)(c) – mark consists exclusively of signs or indications which may

designate characteristics of the goods,

- Section 8(1)(d) – mark consists of signs or indications that have become customary in

the trade,

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

- Section 8(4)(a) – use of mark prohibited by enactment or rule of law,

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

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