DULUX TRADETHERMACOAT+ - 256576

• Administrative Decision Number: 256576
• Date: 18 August 2020
• opponent: Therma-Cote Inc
• 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 registration of Trade Mark No. 256576 and in the matter of an

Opposition thereto.

Akzo Nobel Coatings International B.V. Applicant

(Represented by Cruickshank & Co.)

Therma-Cote Inc. Opponent

(Represented by FRKelly)

The Application

1. On 31 January, 2017 (the relevant date), Akzo Nobel Coatings International B.V., of

Valperweg 76, Arnhem, The Netherlands (hereinafter “the Applicant”) made application

(No. 2017/00214) under Section 37 of the Trade Marks Act, 1996 (“the Act”) to register

DULUX TRADE THERMACOAT+ as a Trade Mark in respect of the following goods in

Class 2:

Paints; coatings; varnishes; lacquers; thinners; colouring matters all being additives for

paints, varnishes or lacquers; preservatives against rust and against deterioration of wood;

priming preparations (in the nature of paints); wood stains.

2. The application was accepted for registration and advertised accordingly under No. 256576

in Journal No. 2329 dated 22 March, 2017.

3. Notice of Opposition to the registration of the mark pursuant to Section 43 of the Act was

filed on 21 June, 2017 by Therma-Cote Inc. of 1369 Herrington Road, Lawrenceville,

Georgia 30044, USA (hereinafter “the Opponent”). The Applicant filed a counter-statement

on 14 September, 2017 and evidence was, in due course, filed by the parties under Rules 20

and 21 of the Trade Marks Rules, 1996 (“the Rules”).

4. The Applicant elected to file written submissions (on 16 January, 2020) in lieu of attending

the Hearing. The Opponent attended the Hearing before me, acting for the Controller, on 3

2

March, 2020. The parties were notified on 6 May, 2020 that I had decided to dismiss the

opposition and to allow the mark to proceed to registration. 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) filed on 19 May, 2020.

Grounds of the Opposition

5. In its Notice of Opposition, the Opponent states it has for many years carried on business as

manufacturers and merchants of a range of specified goods, including paints, varnishes,

lacquers, preservatives against rust and against deterioration of wood; colorants; mordants;

raw natural resins; metal in foil and powder form for painters, decorators, printers and

artists.

6. It then refers to its proprietorship of a European Union Trade Mark (EUTM) Registration

No. 6997506 THERMACOTE (details of which were attached in Schedule 1), stating it has

for many years extensively used that mark in connection with the goods and services it

provides. The Notice of Opposition states the mark denotes and has long denoted both to the

trade and the public such goods and services as rendered by the Opponent and has long

distinguished these goods and services from the like goods and services of other traders. It

then goes on to state the grounds of its opposition which I summarise as follows:

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

likelihood of association with the Opponent’s Trade Marks

- Section 10(3) – use of mark would take unfair advantage of, or be detrimental to,

distinctive character or reputation of the Opponent’s Trade Marks,

- Section 10(4)(a) – use of the mark in the State is liable to be prevented by virtue of the

law of passing off;

The Opponent stated it also objects to any application of Section 12 of the Act.

Counter-Statement

7. In its Counter-Statement the Applicant denies all the grounds of opposition and states the

Opponent is not entitled under the Act or Rules to object to the application of Section 12 of

the Act, should the Controller decide it is appropriate to apply the provisions of that section.