Star Pizza - 252502

Administrative Decision Number252502
Date20 February 2018
opponentFour Star Pizza (Ireland) Limited
SectionTrade Marks Act, 1996 - 2018 - Current
In the matter of an application for the registration of Trade Mark No. 252502 and in the
matter of an Opposition thereto.
S&N Star Pizza Limited Applicant
Four Star Pizza (Ireland) Limited Opponent
The Application
1. On 4 March 2015 S&N Star Pizza Limited (hereinafter “the Applicant”), of 46 Talbot
Street, Dublin, Ireland made application (No. 2015/00449) under Section 37 of the Trade
Marks Act, 1996 (“the Act”) to register STAR PIZZA as a trade mark in respect of “Pizza
Shop, Pizzeria, Pizza Restaurants, Pizza Takeaway in Class 43. Advertisement of the
acceptance of the application was published in Journal No. 2281 dated 20 May, 2015.
2. Notice of Opposition to the registration of the mark, pursuant to Section 43 of the Act,
was filed on 19 August, 2015 by Four Star Pizza (Ireland) Limited (hereinafter the
Opponent) of 1C Woodlands Office Park, Bray, Co. Wicklow, Ireland. The Applicant
filed a Counter Statement on 30 October, 2015 and evidence was then filed under Rules
20 and 21 of the Trade Mark Rules, 1996 (“the Rules”). The Opponent filed written
submissions in lieu of attending at a Hearing, while the Applicant did not file written
submissions or seek a Hearing.
3. Acting for the Controller, I decided to uphold the opposition and to refuse to allow the
application to proceed to registration. The parties were informed of my decision by way of
letter dated 14 July, 2017. 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
4. In its Notice of Opposition, the Opponent identifies itself as the Proprietor of the
following Trade Mark:
No. 125253
Class 30: Pizzas,
sandwiches, food
Registration Date:
6 February 1987
6. The Opponent then raises objection to the present application under Sections 8 and 10 of
the Act, which I shall summarise as follows:
Section 8(1)(b) the mark is devoid of any distinctive character;
Section 8(1)(c) the mark consists exclusively of signs which designate the quality of the
Section 10(2)(b) the likelihood of confusion on the part of the public, and the likelihood
of association with the Opponent’s earlier FOUR STAR PIZZA (logo) mark;
Section 10(3) use of mark would take unfair advantage of, or be detrimental to, the
distinctive character or reputation of the Opponent’s mark;
Section 10(4)(a) use of mark is prohibited by the law of passing off.
Counter Statement
7. In its Counter Statement the Applicant denies all the grounds of opposition. The Applicant
says it has been successfully trading under the name STAR PIZZA at its Dublin premises
since January 2012. It says the Applicant became aware that similar type businesses in
Wexford and Limerick have commenced trading using the name and logo “Star Pizza”
without having any business association, connection, or having obtained the permission of
the Applicant to so trade under the name “STAR PIZZA”. Accordingly, the Applicant
sought to have its business name registered as a trade mark in accordance with the Act.
8. While the Applicant accepts the Opponent has a recognised trade mark and an associated
reputation in the business of pizza delivery, it strongly denies that if the trade mark at
issue was registered, that it would cause confusion in the marketplace. It argues the
average observant and discerning consumer would not form the view that the Opponent is
responsible for the product and service provided by the Applicant.
9. The Applicant then went on to argue that the mark applied for is clearly distinctive and
distinguishable in the public mind from the Opponent’s mark. While it is not usual for
Applicant’s to set out their arguments in their Counter Statement, I mention them now as

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