NEWGRANGE - 260159

Administrative Decision Number260159
Date14 July 2021
opponentAlan Carroll & David Carroll
SectionTrade Marks Act, 1996 - 2018 - Current
In the matter of an application for registration of Trade Mark No. 260159 and in the matter of
an Opposition thereto.
Sidereus Limited Applicant
Alan Carroll and David Carroll Opponents
The Application
1. On 20 September 2018, Sidereus Limited, of Borris Road, Bagenalstown, Ireland made
application under Section 37 of the Trade Marks Act, 1996 (“the Act”) to register the sign
NEWGRANGE as a trade mark in respect of Watches; Chronographs [watches]; Wrist
watches; Dress watches in Class 14. The application was accepted for registration and
advertised under No. 260159 in Journal No. 2378 dated 6 February 2019.
2. Notice of Opposition to the registration of the mark pursuant to Section 43 of the Act was
filed on 12 February 2019 by Alan Carroll and David Carroll of Bluebell Industrial Estate,
Walkinstown, Dublin, Ireland (hereinafter the Opponents). The Applicant filed a
counter-statement on 22 February 2019 and evidence was, in due course, filed by the
parties under Rules 20, 21 and 22 of the Trade Marks Rules, 1996 (“the Rules”). Both
parties elected to attend a hearing in the matter which, due to COVID-19 restrictions was
held remotely on 9 December 2020.
3. Acting for the Controller, I decided to dismiss the opposition and to allow the application
to proceed to registration. In so deciding, I have considered carefully all the materials and
arguments advanced by both parties and relevant caselaw and precedents. I will refer to
these materials as and when appropriate and necessary below.
4. The parties were informed of my decision by way of letter dated 7 January 2021. 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 Trade Mark Rules
1996, filed on 29 January 2021. Due to an administrative oversight, caused in part by staff
working remotely, that request was not furnished to the Opposition Section of this office. I
apologise for the resulting delay in furnishing these Written Grounds and the
inconvenience caused to both parties.
Grounds of the Opposition
5. In its Notice of Opposition, the Opponents refer to their proprietorship of Trade Mark
Registration No. 253243 in respect of a series of two marks (depicted below), which is
registered as of 10 October 2012 for cutlery; forks; knives; spoons in Class 8; Handbags,
shoulder bags, purses, wallets, clutches, belts, briefcases, umbrellas, parasols, in Class
18; glassware, candles and candle ware, picture frames and tableware in Class 21; and
scarves and headwear; clothing in Class 25.
6. They then raise objection to the present application under various Sections of the Act,
which I summarise as follows:
- Sections 8(1)(b) & (c) the mark is devoid of distinctive character,
- Section 10(2)(b) likelihood of confusion on the part of the public, and likelihood of
association with the Opponent’s trade mark,
- Section 10(3)(a) & (b) use of mark would take unfair advantage of, or be
detrimental to the distinctive character or reputation of the Opponents mark,
- Section 10(4)(a) - use of mark is liable to be prevented by virtue of a rule of law
protecting an unregistered trade mark or other sign,
- Section 11(1)(c) the Opponent’s mark is an earlier mark that is entitled to protection
under the Paris Convention as a well-known trade mark,
- Section 37(2) the Applicant does not use or intend to use mark in relation to goods
covered by the application.
7. In his Counter-Statement, the proprietor of Sidereus Limited (hereinafter the Applicant)
- Mr Bryan Leech, outlines that, in advance of seeking registration for the opposed mark,
he exercised due diligence by conducting a thorough search of the Irish Trade Mark

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