Irish Water - 250111

Date08 July 2016
Administrative Decision Number250111
opponentDr Eddie O Gorman
SectionTrade Marks Act, 1996 - 2008-2017
In the matter of an application for the registration of Trade Mark No. 250111 and in the matter of
an Opposition thereto.
Dr. Eddie O’Gorman Opponent
The Application
1. On 4 December, 2012 (“the relevant date”), BORD GÁIS EIREANN, of Gasworks Road,
Cork, Ireland made application (No. 2012/02099) under Section 37 of the Trade Marks Act,
1996 (“the Act”) to register IRISH WATER as a trade mark in respect of the following goods
and services:
Class 6
Water pipes, water tanks, water valves all being of metal.
Class 9
Water meters, water level indicators, water level gauges, water level detection
apparatus, water leakage detection alarms.
Class 11
Apparatus for filtering water, declassifying water, descaling water, apparatus for
control of water supply, apparatus for purifying water, softening water,
decontaminating water, apparatus for distribution of water, apparatus for supply of
water for sanitary purposes, drinking water filters, drinking water supply apparatus,
drinking water supply installations, pressurised water reserves, pressurised water
tanks, regulation instruments for water supply, water pipes, water apparatus and
installations, hot water sterilizers, water purifying units, water filtering units, water
distilling units.
Class 16
Printed matter, publications, information leaflets.
Class 32
Water, bottled water, bottled drinking water, aerated water, carbonated water,
mineral water, sparkling water, table water.
Class 35
Business, administration and promotional advertising services.
Class 37
Construction services relating to water supply mains and water pipes, cleaning of
drains, cleaning of water cylinders, cleaning of water supply pipe work and water
supply plumbing, cleaning of water tanks, installation, maintenance and repair of
waterways and water installations, repair, maintenance of purifying apparatus and
water pollution control equipment, water well drilling.
Class 39
Delivery, distribution and supply of water, public utilities in the nature of supplying
water, public utility services in the nature of water distribution, services for the
supply of water by pipeline, storage of water and reservoirs, storage of water in
tanks, water distribution and supply.
Class 40
De-mineralisation of water, desalination of water, disposal of waste water for
industrial processes, purification of industrial waste water, regeneration of water,
rental of water filters, rental of water filtration units for commercial use, rental of
water purifying apparatus, rental of water treatment equipment, treatment of waste
water, treatment of water, waste and/or water treatment services, waste water
reprocessing, water pollution control, water purification, water treatment.
Class 41
Educational services in relation to water, water management, water pollution, water
safety, providing courses in the field of water management.
Class 42
Analysis of water, digital water marking, water quality control services
2. The application was subsequently assigned to Irish Water, of Colvill House, 24-26 Talbot
Street, Dublin 1, Ireland by virtue of a Deed of Assignment dated 17 February, 2014.
3. During the examination of the application the Examiner raised, and subsequently maintained,
objections to the application and indicated her intention to refuse the application, following
which the Applicant sought a Hearing of the matter. The Applicant was heard and the Hearing
Officer accepted the application for all goods and services in Classes 6, 9, 11, 16, 35, 37, 39,
40, 41 and 42, but refused the application in respect of all goods in Class 32. The application
was advertised accordingly under number 250111 in Journal No. 2252 dated 9 April, 2014.
4. Notice of Opposition to the registration of the mark, pursuant to Section 43 of the Act, was
filed on 2 July, 2014 by Dr. Eddie O’Gorman of Salmon IP, Ormonde House, 10 Ormonde
Road, Kilkenny, Ireland. The Applicant filed a counter-statement on 8 July, 2014 and
evidence was then filed under Rules 20 and 21 of the Trade Mark Rules, 1996 (“the Rules”).
The Applicant attended a Hearing of the matter on 12 January, 2016.
5. Acting for the Controller, I decided to uphold the opposition and to refuse to allow the
application to proceed to registration in respect of all goods and service in Classes 6, 9, 11,
37, 39, 40, 41 and 42. I dismissed the opposition in respect of all goods and services in
Classes 16 and 35, and accordingly allowed the application to proceed to registration for
printed matter, publications and information leaflets, and business, administration and
promotional advertising services. The parties were informed of my decision by way of letter
dated 16 February, 2016. 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
6. In his Notice of Opposition the Opponent raises objections to the present application on the
grounds that the mark applied for is incapable of distinguishing the goods and services of
Irish Water from companies who are or will provide Irish water related services. He states
there is no device or logo to satisfy this requirement, so it cannot even be described as a “fig
leaf” trade mark. Hence, the mark must be refused under Section 8(1)(a) - the sign is not a
trade mark, and Section 8(1)(b) the sign is devoid of any distinctive character.

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT