NXT - 259192

• Administrative Decision Number: 259192
• Date: 13 May 2021
• opponent: Nest Retail 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 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

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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.

Counter-Statement

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