Star Pizza - 252502

• Administrative Decision Number: 252502
• Date: 20 February 2018
• opponent: Four Star Pizza (Ireland) Limited
• Section: Trade Marks Act, 1996 - 2018 - Current

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 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:

2

No. 125253

Class 30: Pizzas,

sandwiches, food

preparations.

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

services;

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