Royal Coil - 257681

• Administrative Decision Number: 257681
• Date: 02 April 2020
• opponent: King Koil Licensing Company, Incorporated
• Section: Trade Marks Act, 1996 - 2018 - Current

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DECISION OF THE CONTROLLER OF INTELLECTUAL PROPERTY

IN PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

In the matter of an application for registration of Trade Mark No. 257681 and in the matter of an

opposition thereto.

ALYSON SMALL Applicant

(Represented by MacLachlan & Donaldson)

KING KOIL LICENSING COMPANY, INCORPORATED Opponent

(Represented by FRKelly)

The Application

1. On 31 October 2016, Alyson Small, of 57 Chancellors Road, Newry, United Kingdom made

application (No. 2016/02299) under Section 37 of the Trade Marks Act, 1996 (“the Act”) to

register “Royal Coil” in respect of the following goods:

Class 20: Furniture; Domestic furniture; Metal furniture; Household furniture; Furniture parts;

Bedroom furniture; Fitted furniture; Seating furniture; Seats [furniture]; Stuffed furniture;

Padded furniture; Upholstered furniture; Furniture chests; Wooden furniture; Furniture frames;

Storage furniture; Recliners [furniture]; Dressers [furniture]; Slatted furniture; Furniture units;

Units [furniture]; Cushions [furniture]; Furniture cabinets; Lounge furniture; Vanity units

[furniture]; Storage modules [furniture]; Furniture for caravans; Living room furniture; Storage

drawers [furniture]; Storage boxes [furniture]; Drawers [furniture parts]; Storage cupboards

[furniture]; Cupboards being furniture; Furniture incorporating beds; Fitted bedroom furniture;

Upholstered convertible furniture; Mattresses; Mattress toppers; Mattress pads; Mattress

cushions; Mattress bases; Bed mattresses; Mattresses (Spring -); Spring mattresses; Air

mattresses; Foam mattresses; Inner sprung mattresses; Futon mattresses [other than childbirth

mattresses]; Mattresses [other than child birth mattresses]; Fire resistant mattresses; Sleeping

mats for camping [mattresses]; Beds incorporating inner sprung mattresses; Mattresses made of

flexible wood; Nap mats [cushions or mattresses]; Beds, bedding, mattresses, pillows and

cushions; Spring assemblies (Non-metallic -) for incorporation into mattresses.

Class 24: Furniture coverings (unfitted); Velours for furniture; Coverings for furniture; Throws

(furniture coverings); Loose furniture coverings; Coverings (Furniture -) of textile; Furniture

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coverings of textile; Silk fabrics for furniture; Woven fabrics for furniture; Unfitted fabric

furniture covers; Furniture coverings of plastic; Loose covers for furniture; Loose coverings for

furniture; Covers [loose] for furniture; Furniture (Loose covers for -).

2. Following objections by a Trade Mark Examiner on a number of grounds, the application was

ultimately accepted for publication on the basis that it was proceeding with the consent of the

proprietor of European Union Trade Mark No. 015976665 and on the basis that the mark had

been used honestly and concurrently in the Irish marketplace in parallel with Irish Trade Mark

Number 105580 (KING KOIL). The application was accepted under number 257681 and

advertised accordingly in Journal No. 2345 dated 1 November 2017.

3. A Notice of Opposition pursuant to Section 43 of the Act was filed on 7 December 2017 in the

name of KING KOIL LICENSING COMPANY, INC of 7501 S. Quincy Street, Willowbrook,

Illinois, United States of America. The Applicant filed a Counter Statement on 5 January 2018

and evidence was, in due course, filed by the parties under Rules 20, 21 and 22 of the Trade

Mark Rules, 1996 (“the Rules”). Both parties elected to attend a Hearing on the matter on 31

October 2019.

4. Acting for the Controller, I decided to dismiss the opposition and to allow the application to

proceed to registration. The parties were informed of my decision by way of letter dated 18

November, 2019. 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

5. In its Notice of Opposition, the Opponent identifies itself as the proprietor of the following two

Irish Trade Mark Registrations:

Number

Trade Mark

Registration

Date

Goods

105580

KING KOIL

3/11/1981

Beds, sofa beds, mattresses and

box springs for beds, in Class 20

246674

THE INCREDIBLE BED

BY KING KOIL

9/2/2012

Beds, box springs and

mattresses, in Class 20

The Opponent then raises objections under various Sections of the Act, which I summarise as

follows: