SOLARGRID - 243689

Administrative Decision Number243689
SectionTrade Marks Act, 1996 - 2008-2017
In the matter of an application for registration of Trade Mark No. 243689 and in the matter of
an Opposition thereto.
(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
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.
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

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