CALGAZ - 803334

• Administrative Decision Number: 803334
• opponent: CALOR GAS LIMITED
• Section: Trade Marks Act, 1996 - 2008-2017

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DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE

MARKS IN PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

BETWEEN

L’AIR LIQUIDE S.A.

Holder

and

CALOR GAS LIMITED

Opponent

CONCERNING

International Trade Mark No. 803334 - CALGAZ

Background

1. L’air Liquide, Société Anonyme à Directiore et Conseil de Surveillance pour

l’Etude et l’Exploitation des procédés Georges Claude, of 75 quai d’Orsay, F-

75321, Paris Cedex 7, France, is the Holder of International Trade Mark

Registration No. 803334 in respect of the trade mark, CALGAZ, which was

registered by the International Bureau of the World Intellectual Property

Organisation, pursuant to the Madrid Agreement Concerning the International

Registration of Marks and the Protocol relating thereto, as of 31 March, 2003 in

respect of the following goods in Classes 1 and 6:

Class 1: Chemicals in gaseous form and particularly air gases, chemical

gases, special gases and mixes thereof

Class 6: Containers and bottles for pressurised gases

2. Ireland is one of the countries designated under the International Registration and,

by notification dated 26 June, 2003, the International Bureau informed the

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Controller of the request for extension to the State of the protection resulting from

the International Registration. By virtue of Regulation 3 of the Trade Marks

(Madrid Protocol) Regulations, 2001 (S.I. 346 of 2001), the Trade Marks Act,

1996 (the Act) applies to the request for protection as it applies to an application

for registration under the Act.

3. The request for protection was subsequently examined in accordance with the

provisions of the Act and it was accepted and advertised accordingly in Journal

No. 1977 on 17 September, 2003.

4. Notice of opposition to the granting of protection to the mark pursuant to Section

43 of the Act was filed on 16 December, 2003 by Calor Gas Limited, a British

company of Athena Drive, Tachbrook Park, Warwick, CV34 6RL, United

Kingdom. The Holder filed a counter-statement on 3 February, 2004 and

evidence was subsequently filed by the parties under Rules 20, 21 and 22 of the

Trade Marks Rules, 1996 (“the Rules”).

5. By notification received on 10 August, 2007, the International Bureau informed

the Controller of a limitation recorded in the International Register on 31 May,

2007, whereby the goods covered by the international registration were limited,

insofar as Ireland was concerned, to the following:

Class 1: Chemicals in gaseous form, namely speciality gases and mixes

thereof for use in the calibration of equipment

Class 6: Non-refillable containers and bottles for pressurised gases used in

the calibration of equipment

6. Following the publication of that restriction in Journal No. 2080 on 5 September,

2007, the Controller wrote to the Opponent in accordance with Rule 26(i) of the

Rules informing it of the restriction and directing attention to Rule 26(ii). On 5

October, 2007 the Opponent indicated that it wished to proceed with its opposition

on the basis of the notice of opposition as originally filed.