AUTOKEY - 253794-253948

Administrative Decision Number253794-253948
Date24 July 2018
opponentBarry Lynch and A Aabound Ltd
SectionTrade Marks Act, 1996 - 2018 - Current
In the matter of applications for registration of Trade Mark Nos. 253794 and 253948 and in the
matter of Oppositions thereto.
(Represented by Robert Emmet Bourke Solicitors)
(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.
Application Number 2015/00465
Application Date 7/3/2015
Registration Number 253794
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
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;

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