SOLARGRID - 243689

• Administrative Decision Number: 243689
• opponent: NGRID INTELLECTUAL PROPERTY 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. 243689 and in the matter of

an Opposition thereto.

NIGEL KELLY Applicant

NGRID INTELLECTUAL PROPERTY LIMITED Opponent

(Represented by MacLachlan & Donaldson)

The Application

1. On 27 March, 2009, Nigel Kelly, an Irish citizen, of Drumdangan, Glenealy, Co.

Wicklow, Ireland made application (No. 2010/00969) under Section 37 of the Trade

Marks Act, 1996 (“the Act”) to register the sign below as a trade mark in respect of

“Electrical appliances installation and repair” in Class 37.

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

243689 in Journal No. 2157 dated 18 August, 2009.

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

was filed on 17 October, 2010 by NGRID Intellectual Property Limited of 1-3 Strand

Street, London WC2N 5EH, England. The Applicant filed a counter-statement on 21

February, 2011. Evidence was filed by the Opponent under Rule 20 of the Trade Mark

Rules, 1996 (“the Rules”), but no evidence in support of the application was filed under

Rule 21 by the Applicant. On foot of the Applicant’s failure to file evidence under Rule

21 the Opponent argued that the application be deemed to have been abandoned. The

Controller did not concur (I will return to this issue later) and moved the proceedings on

to the Rule 25 stage under which the parties were invited to elect to attend at a hearing of

the matter or to file written submissions in lieu of attending at a hearing. The Opponent

2

elected to file written submissions and did so on 30 November, 2012. The Applicant

elected to attend at a hearing, which was held on 25 July, 2013.

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

30 July, 2013. 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 Trade Mark Rules 1996, filed on 23 August, 2013.

Grounds of the Opposition

5. In its Notice of Opposition the Opponent identifies itself as one of the world’s largest

companies in the sphere of utilities, energy and related fields and as the proprietor of

numerous trade marks containing the word ‘GRID’. The Opponent attached to its Notice

of Opposition details of 13 such trade marks, all of which are protected for some services

in Class 37 (I have reproduced the relevant material at Annex 1). The Opponent raises

objection to the present application under various Sections of the Act, which I shall

summarise as follows:

- Section 8(1)(b) – mark devoid of any distinctive character;

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

designate characteristics of the goods;

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

- 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 various ‘GRID’ 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 marks;

- Section 10(4)(a) - use of mark is liable to be prevented by virtue of any rule of law

protecting an unregistered trade mark or other sign.

Counter-Statement

6. In its Counter-Statement the Applicant denies the grounds of opposition. He goes further

and advances arguments in response to the particular claims by the Opponent regarding

similarity of the respective marks and services for which protection is sought, the different