AUTOKEY - 253794-253948

• Administrative Decision Number: 253794-253948
• Date: 24 July 2018
• opponent: Barry Lynch and A Aabound Ltd
• Section: Trade Marks Act, 1996 - 2018 - Current

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DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS

IN PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

In the matter of applications for registration of Trade Mark Nos. 253794 and 253948 and in the

matter of Oppositions thereto.

AUTOKEY AUTOMOTIVE LIMITED Applicant

(Represented by Robert Emmet Bourke Solicitors)

BARRY LYNCH and A AABOUND LIMITED Opponent

(Represented by Baynes & Co. Solicitors)

The Applications

1. Autokey Automotive Limited, an Irish company, of Newlands Motor Centre, Newlands

Cross, Dublin 22, Ireland made applications under Section 37 of the Trade Marks Act, 1996

(“the Act”) to register the following two marks as trade marks in respect of identical

services, as listed:

Application Number 2015/00242

Application Date 2/2/2015

Registration Number 253948

Class 37: Motor vehicle maintenance and repair; repair

and installation services for motor-vehicle locks, keys,

windows and doors; installation, maintenance and repair

of computer hardware for motor-vehicle keys and locks;

vehicle battery charging; vehicle breakdown assistance

(repair); vehicle roadside repair services; vehicle service

stations (refuelling and maintenance); locksmith

services for motor vehicles (repair and installation).

Class 39: Vehicle breakdown assistance (towing);

collection and delivery of motor vehicle keys and motor

vehicle spare parts; vehicle roadside recovery services.

Class 40: Key cutting and key duplication services for

motor vehicles; locksmith services for motor vehicles

(key cutting and duplication).

Class 42: Installation, maintenance and repair of

computer software for motor-vehicle locks and keys;

testing of vehicles; installation, maintenance and repair

of computer software for motor vehicles.

Class 45: Opening of security locks for motor vehicles;

motor vehicle door unlocking services.

AutoKey

Application Number 2015/00465

Application Date 7/3/2015

Registration Number 253794

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2. Application number 2015/00465 was accepted for registration under number 253794 and

advertised accordingly in Journal No. 2296 dated 16 December 2015 and application number

2015/00242 was accepted for registration under number 253948 and advertised accordingly

in Journal No. 2299 dated 27 January 2016.

3. Notices of Opposition to the registration of the both marks pursuant to Section 43 of the Act

were filed on 9 March 2016 in the dual names of Barry Lynch, of Raheny, Dublin 5, Ireland

and A AABOUND Limited, of Capel Street, Dublin 1, Ireland. The Applicant filed counter-

statements on 13 June 2016 and evidence was, in due course, filed by the parties under Rules

20, 21 and 22 of the Trade Marks Rules, 1996 (“the Rules”). Throughout the course of both

proceedings identical evidence and arguments were advanced in respect of both oppositions

by the parties involved. Also, at no time did either of the named opponents identify any

evidence or argument that was relevant solely to them and not to the other opponent.

Accordingly, and in order to avoid unnecessary duplication, I have combined my

deliberations and reasoning behind my decisions in respect of both oppositions into these

written grounds. Furthermore, for simplicity, as Mr. Lynch is a director of the second named

opponent I shall hereafter refer to Mr. Lynch and A AABOUND Limited as “the

Opponents”.

4. One Hearing was held in respect of the combined matters. Acting for the Controller, I

decided to dismiss the oppositions and to allow the applications to proceed to registration.

The parties were informed of my decision by way of letter dated 11 December, 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 Trade Mark Rules 1996.

Grounds of the Opposition

5. In their Notices of Opposition, the Opponents raise objection to the two applications under

various Sections of the Act, which I shall summarise as follows:

- Section 8(1)(b) – the marks are devoid of distinctive character;

- Section 8(1)(c) – the marks consist exclusively of signs or indications which relate to

characteristics of the services;

- Section 8(1)(d) – the marks consist exclusively of signs or indications which have

become customary in the current language or in the bona fide and established practices

of the trade;