Administrative Decision Number260422
Date10 August 2021
opponentBlow Ltd
SectionTrade Marks Act, 1996 - 2018 - Current
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 Applicants 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.
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 Applicants 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
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.

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT