BLOW SALOONS - 260422

• Administrative Decision Number: 260422
• Date: 10 August 2021
• opponent: Blow Ltd
• 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. 260422 and in the matter of

an Opposition thereto.

Baycal Limited Applicant

Blow Limited Opponent

The Application

1. On 10 August 2017 Baycal Limited (hereinafter “the Applicant”), of 114 Lesson Street,

Dublin, Ireland made application (No. 2017/01761) under Section 37 of the Trade Marks

Act, 1996 (“the Act”) to register the sign below (hereinafter “Blow Salons”) as a trade

mark in respect of “Hairdressing; Beauty care; Beauty treatment; Beauty salons; Beauty

salon services; Nail salon services; Nail care services; Skin care salons; Skin care salon

services” in Class 44.

2. When considering the application, the Trade Mark Examiner raised an objection to its

acceptance based on Section 10(2)(b) of the Act on the grounds that the mark applied for

would be likely to cause confusion with the earlier European Union Trade Mark (EUTM)

no. 012129094. The Applicant sought to rely on Section 12 of the Act (which allows the

Controller to waive certain objections based on claims of honest concurrent use) and

convinced the Examiner, by providing the necessary evidence, to waive the objection on

the grounds that the Applicant’s mark had existed in the Irish marketplace for many years

during which it was honestly used at the same time as EUTM no. 012129094 was used in

the EU. The application was then accepted for registration and advertised accordingly

under No. 260422 in Journal No. 2380 dated 6 March 2019, with the Journal entry stating:

“The application for registration is proceeding based on honest concurrent use with

European Union Trade Mark No. 012129094”.

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

filed on 5 June 2019 by Blow Limited (hereinafter “the Opponent”) of 81 Farrington

Street, London, United Kingdom. The Applicant filed a counter statement on 10

September 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 filed written

submissions in lieu of attending a hearing in the matter, and the Opponent filed

submissions in reply to the Applicant’s written submissions.

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

to proceed to registration. In so deciding, I fully and carefully considered 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.

5. The parties were informed of my decision by way of letter dated 27 May 2021. I now state

the grounds of my decision and the materials used in arriving thereat in response to a

request by the Applicant in that regard pursuant to Rule 27(2) of the Trade Mark Rules

1996.

Grounds of the Opposition

6. In its Notice of Opposition, the Opponent refers to its proprietorship of European Union

Trade Mark (EUTM) No. 012129094 (the mark upon which the Examiner had earlier

based objections) relating to which was applied for on 10 September

2013, in respect of the following goods and services:

Class 3: Toiletries; cosmetics; make-up products; hair care preparations; hair styling

preparations; shampoos; hair colouring preparations; skin care preparations.

Class 41: Education and training in relation to hairdressing and beauty care.

Class 44: Hairdressing services; hairdressing salon services; beauty care services;

beauty salon services; consultancy services relating to hair styling, hair care,

hairdressing; beauty makeovers.