GOLDEN WONDER - 89809

• Administrative Decision Number: 89809
• Date: 20 January 2002
• opponent: TAYTO LIMITED

TRADE MARKS ACT, 1963

In the matter of an application to rectify the Register of Trade Marks by the

removal therefrom of Trade Mark No. B89809.

DALGETY SPILLERS FOODS LIMITED Applicants

TAYTO LIMITED Registered Proprietors

1. On 10 June, 1993, Dalgety Spillers Foods Limited, a British company of 100

George Street, London W1H 5RH, England applied to the Controller to rectify

the Register of Trade Marks by the removal of Trade Mark No. B89809, pursuant

to Sections 34 and 40 of the Trade Marks Act, 1963 and Rule 70 of the Trade

Marks Rules, 1963.

2. On 28 October, 1993 the registered proprietors of the said trade mark, Tayto

Limited, an Irish company of Greencastle Road, Coolock, Dublin, filed a counter-

statement opposing the application for rectification.

3. Evidence was, in due course, filed by the parties under Rules 37, 38 and 39 of

the Trade Marks Rules, 1963.

4. The matter became the subject of a hearing before me, acting for the

Controller, on 15 May, 2000. The parties were informed on 1 May, 2002 that I

had decided to allow the Application for Rectification.

I now state the grounds of my decision and the materials used in arriving thereat.

5. In the Statement of Case accompanying their application, the Applicants for

Rectification stated as follows:-

(i) Dalgety Spillers Foods Limited (Dalgety), a British Company of 100

George Street, London W1H 5RH, England, has acquired by assignment the

registered and unregistered trade marks formerly owned by Golden Wonder

Limited (GWL), by virtue of an assignment dated March 26 1991.

(ii) The assignment has been recorded in the Trade Marks Register in

connection with the existing registrations and will be recorded in due course in

connection with the currently unregistered trade marks, which include the Trade

Mark GOLDEN WONDER. Applications are on file to register the unregistered

trade marks, these applications being identified as numbers 960/85 to 971/85

inclusive and 979/85. Dalgety has also acquired the Trade Mark GOLDEN

WONDER in the United Kingdom of Great Britain and Northern Ireland.

(iii) The Trade Mark GOLDEN WONDER is one of the most famous of all

trade marks used in the snack foods area. Since at least the year 1965, GWL has

been using the Trade Mark GOLDEN WONDER throughout the United

Kingdom of Great Britain and Northern Ireland in connection with potato crisps.

The words GOLDEN WONDER were first used by GWL as a trade mark in

Scotland in 1952 and by 1957 GOLDEN WONDER crisps were launched onto

the markets of England, Wales and Northern Ireland in respect of potato crisps.

(iv) GWL’s sales in the United Kingdom (including Northern Ireland)

under the Trade Mark GOLDEN WONDER have been supported by heavy

advertising and press coverage. Over all of the years since 1964 GWL has

continued to use the Trade Mark GOLDEN WONDER extensively in the United

Kingdom of Great Britain and Northern Ireland and to advertise the trade mark

heavily in those territories and also in the Republic of Ireland.

(v) The Trade mark GOLDEN WONDER has not only been used in

connection with potato crisps but has also been used in the United Kingdom and

in the Republic of Ireland in connection with a significant variety of other snack

food products. By 1975 the Trade Mark GOLDEN WONDER had become by

virtue of such use and advertising extremely well known within the Republic of

Ireland. Since 1975 the Trade Mark GOLDEN has continued to be used in the

Republic of Ireland in connection with a wide variety of snack foods and has also

continued to be heavily advertised on television and in publications which are