Ireland's Got Talent Blanchardstown's Got Talent Irellywood - 254833

• Administrative Decision Number: 254833
• Date: 24 October 2018
• opponent: Simco Ltd and FreemantleMedia 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 an application for the registration of Trade Mark No. 254833 and in the matter

of an Opposition thereto.

Irelands Got Talent and Blanchardstown Got Talent Applicant

Simco Limited and FreemantleMedia Limited Opponents

The Application

1. On 31 March 2016 Irelands Got Talent and Blanchardstowns Got Talent of 112 Avondale

Park, Mulhuddart, Dublin 15, Ireland (hereinafter “the Applicant”), made application (No.

2016/00677) under Section 37 of the Trade Marks Act, 1996 (“the Act”) to register

IRELAND'S GOT TALENT BLANCHARDSTOWN'S GOT TALENT IRELLYWOOD

as a trade mark in respect of “Entertainment” in Class 41.

2. The application was accepted and published in Journal No. 2309 on 15 June 2016. Notice

of Opposition to the registration of the mark, pursuant to Section 43 of the Act, was filed

on 14 September 2016 by Simco Limited, of 9 Derry Street, London, United Kingdom and

FreemantleMedia Limited of 1 Stephen Street, London, United Kingdom (hereinafter “the

Opponents”).

3. The Applicant filed a counter-statement on 22 November 2016 and evidence was then filed

under Rules 20 and 21 of the Trade Mark Rules, 1996 (“the Rules”). Both parties attended

a hearing on the matter on 14 June 2018.

4. 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 25 June 2018. I now state the grounds of my decision and the materials used in

arriving thereat in response to a request by the Opponent, dated 6 July 2018, pursuant to

Rule 27(2) of the Rules.

Grounds of the Opposition

5. In their Notice of Opposition, the Opponents identify themselves as providers of, inter alia,

entertainment services, the production and presentation of television and radio

programmes, films, sound and video recordings, services relating to the organisation,

presentation and production of competitions, shows, live performances and audience

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participation events, and related goods and services. They say they are the registered

proprietors of the following European Union Trade Marks:

Number

Mark

Nice Classes

Application Date

008385874

GOT TALENT

9, 38 and 41

24/6/2009

012124459

THE WORLD'S GOT TALENT

9, 38 and 41

9/9/2013

014510325

ESPAÑA GOT TALENT

9, 38 and 41

26/8/2015

008889644

ČESKOSLOVENSKO MÁ TALENT

9, 16, 25, 28,

38 and 41

17/2/2010

6. The Opponents also say they are the Proprietors of many international GOT TALENT

marks (e.g. Britain’s Got Talent, America’s Got Talent) and attach a list of them to their

Notice of Opposition. They then raise objections to the present application under Sections 8

and 10 of the Act, which I summarise as follows:

Section 8(4)(b) – the application was made in bad faith by the Applicant;

Section 10(2)(b) – a likelihood of confusion on the part of the public, and the

likelihood of association with the Opponent’s earlier GOT TALENT marks;

Section 10(3) – use of the mark applied for would take unfair advantage of, or be

detrimental to, the distinctive character or reputation of the Opponents’ marks;

Section 10(4)(a) – use of the applied for mark is prohibited by virtue of the law of

passing off.

7. They also object to any application of Section 12 of the Act which would allow the

application to proceed to registration on the grounds of honest concurrent use of the

disputed mark and the Opponents’ earlier marks. The Opponents’ final ground of objection

is the Applicant is not a legal entity and, accordingly, it is disentitled to hold property, such

as a trade mark application or trade mark registration.

Counter Statement

8. Ms. Rebecca Omakaro replied to the Notice of Opposition. I would summarise the relevant

contents of her statement as rejecting the Opponents’ claims to own the rights to Ireland’s

Got Talent, and contending that owning other marks (e.g. Britain’s Got Talent and