Administrative Decision Number251619
Date31 July 2019
SectionTrade Marks Act, 1996 - 2018 - Current
In the matter of an application for the protection of International Registration No. 251619 and in
the matter of an Opposition thereto.
BAVARIA N .V. Applicant
(Represented by MacLachlan & Donaldson)
(Represented by Tomkins & Co.)
The Application
1. On 23 September, 2014 (the relevant date), Bavaria N.V. of de Stater 1, NL-5737 RV
Lieshout, the Netherlands, made an application to register this sign:
(hereinafter BAVARIA HOLLAND) as a Trade Mark in respect of the “Beers” in Class 32.
2. The application was accepted for registration and advertised accordingly in Journal No. 2271
dated 31 December, 2014.
3. Notice of Opposition to the registration of the mark pursuant to Section 43 of the Trade
Marks Act, 1996 (“the Act”) was filed on 30 January, 2015 by Bayerischer Brauerbund e.V.
of Oskar-von-Miller-Ring, D-80333 Munchen, Germany. The Applicant filed a counter-
statement on 8 April, 2015 and evidence was, in due course, filed by the parties under Rules
20, 21, and 22 of the Trade Marks Rules, 1996 (“the Rules”).
4. The opposition became the subject of a hearing before me, acting for the Controller, on 19
February, 2019. The parties were notified on 6 March, 2019 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 Applicant in that
regard pursuant to Rule 27(2) of the Rules.
Grounds of the Opposition
5. In its Notice of Opposition, the Opponent states that it is the proprietor of the Protected
Geographical Indication BAYERISCHES BIER (hereinafter the PGI) under Council
Regulation (EEC) No. 2081/92 of 14 July, 1992 for the protection of geographical
indications and designations of origin for agricultural products and foodstuffs. The protection
was granted by Council Regulation (EC) No. 1347/2001 and published on page 3 of Official
Journal L182 of 5 July, 2001.
6. The Opponent then raises objection to the application based on two grounds: (i) the
protection afforded the PGI and its validity and effect in all Member States of the European
Union and (ii) under Section 8(4)(a) of the Act, on the basis that the use of the mark is
prohibited in the State by an enactment or rule of law or by any provision of Community law.
7. In its Counter Statement the Applicant admits the Opponent is the proprietor of the PGI
Bayerisches Bier. Nonetheless, Council Regulation (EC) No. 1347/2001 which approved the
PGI Bayerisches Bier also makes it clear that following notification of the application by the
German authorities to register the PGI the Dutch and Danish authorities informed the
Commission of the existence of trade marks used for beer which include that name.
According to Article (3) of the Council Regulation, “The information provided confirms the
existence of the name ‘Bavaria’ as a valid trade mark. In view of the facts and information
available, it was considered that registration of the name ‘Bayerisches Bier’ was not liable to
mislead the consumer as to the true identity of the product. Consequently, the PGI and the
trade mark ‘Bavaria’ are not in the situation referred to in Article 14(3) of Regulation (EEC)
No. 2081/92. The Applicant claims that it is clear therefore, from Council Regulation No.
1347/2001, that the Council decided that the PGI and the trade mark BAVARIA were not
confusingly similar.
8. Furthermore, the Applicant states in its Counter Statement the trade mark BAVARIA has
been in use in the State since before the date of the PGI and is still in use in the State. As a
consequence of that use the Applicant’s trade mark BAVARIA is distinctive of the
Applicant’s goods. The Applicant denies the application offends against Section 8(4)(a) of
the Trade Marks Act, 1996 and states the Applicant is fully entitled to register the trade

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