NXT - 259192

Administrative Decision Number259192
Date13 May 2021
opponentNest Retail Ltd
SectionTrade Marks Act, 1996 - 2018 - Current
In the matter of an application for registration of Trade Mark No. 259192 and in the matter of an
Opposition thereto.
Philip Foy Applicant
Next Retail Limited Opponent
(Represented by FRKelly)
The Application
1. On 24 April 2018 (the relevant date), Philip Foy, of Lisduff Cross, Moydow, Longford, Ireland
(hereinafter the Applicant) made application (No. 2018/00840) under Section 37 of the Trade
Marks Act, 1996 (“the Act”) to register the trade mark below (hereinafter NXT device) in
respect of the following services in Class 35: Retail services in relation to smartphones; Retail
services in relation to smartwatches; Retail services relating to audio-visual equipment; Retail
services in relation to computer hardware; Retail services in relation to computer software;
Retail services in relation to mobile phones; Retail services in relation to wearable computers;
Retail services in relation to information technology equipment; Retail services in relation to
audio-visual equipment; Retail services in relation to domestic electronic equipment.
2. The application was accepted for registration and advertised accordingly under No. 259192 in
Journal No. 2364 dated 25 July 2018.
3. Notice of Opposition to the registration of the mark pursuant to Section 43 of the Act was filed
on 24 October, 2018 by Next Retail Limited, a UK Company of Desford Road, Leicester,
United Kingdom (hereinafter the Opponent). The Applicant filed a counter-statement on 20
December 2018 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 in lieu of attending the Hearing. The
Opponent elected not to attend a Hearing or to file written submissions in lieu of attending a
Hearing, as is its right. The parties were notified on 8 February 2021 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 5 March 2021.
Grounds of the Opposition
5. In its Notice of Opposition, the Opponent states it has for many years carried out business as a
retailer of, inter alia, clothing, footwear and home products. It then refers to its proprietorship of
four European Union Trade Marks (EUTMs) and one Irish Trade Mark. The marks are either for
the plain black type words next or NEXT. The five registrations combined are in respect of
an extensive range of goods and services across Classes 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 18, 20,
21, 24, 25, 26, 27, 28, 29, 30, 32, 35, 36, 39, 42, 43 and 45.
6. The Notice of Opposition states the marks denote and have long denoted both to the trade and
the public such goods and services are 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 opposition, some of which are invalid and need not be mentioned. The valid
grounds relate to the following sections of the Act:
- Section 10(2)(b) identity or similarity of the goods and services and the identity or
similarity of the marks, leading to a 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; and
- Section 10(4)(a) use of the mark in the State is liable to be prevented by virtue of the law
of passing off.
7. In its Counter Statement the Applicant denies all the grounds of opposition. The Applicant
denies the marks are identical or similar, and that the goods in respect of the retail services for
which the Applicant seeks registration are goods that the Opponent retails in Ireland. On that
basis there is no likelihood of any confusion in the marketplace if the Applicant was to use the
mark in respect of the retail services applied for.
Rule 20 Evidence
8. Evidence submitted by the Opponent under Rule 20 consists of a Statutory Declaration dated 27
June 2019, and supporting evidence, by way of eighteen exhibits (marked N1 to N18), of Sarah
Louise Waterland, Deputy General Counsel of the Opponent. I have examined in detail the

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