AllenkeyGuard - 248164

• Date: 25 August 2017
• Administrative Decision Number: 248164
• opponent: Kee Safety 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

In the matter of an application for registration of Trade Mark No. 248164 and in the matter of

an Opposition thereto.

ALLENKEY FITTINGS LIMITED Applicant

KEE SAFETY LIMITED Opponents

The Application

1. On 15 November, 2012 (the relevant date), ALLENKEYFITTINGS LIMITED, of Unit 6,

Block W, Ballymount Industrial Estate, Walkinstown, Dublin 12, Ireland made

application (No. 2012/01981) under Section 37 of the Trade Marks Act, 1996 (“the Act”)

to register AllenkeyGuard as a Trade Mark in respect of the following goods:

Class 6: Free standing roof edge guardrails, comprised of steel tube and tubular

fittings, which are used as part of a safety system for people working at heights.

Class 17: A rubber-based material moulded from a mixture of granulated recycled

tyre material for use as a counterbalance for a free standing guardrail.

Class 37: Roofing services namely installation of fall protection systems for people

working on roofs

2. The application was accepted for registration and advertised accordingly under No.

248164 in Journal No. 2222 dated 13 February, 2013.

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

filed on 10 May, 2013 by Kee Safety Limited of Cradley Business Park, Overend Road,

Cradley Heath, West Midlands B64 7DW, United Kingdom, in relation to all the goods

and services covered by the application. The Applicant filed a counter-statement on 8

August, 2013 and evidence was, in due course, filed by the parties under Rules 20, 21 and

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

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4. The Applicant elected to file written submissions in lieu of attending at the Hearing,

while the Opponent elected to attend the Hearing, which I presided over on 28 March,

2017. The parties were notified on 25 April, 2017 that I had decided to uphold the

opposition and to refuse the registration of the mark. 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 Rules.

Grounds of Opposition

5. In its Notice of Opposition the Opponent states it was established in the UK in 1934 and

is a leading global supplier of components and bespoke systems for railings, barriers, roof

edge protection and fall prevention. It is the proprietor of a large number of Community

Trade Marks, including the two listed in the table below upon which the opposition is

grounded, and has used these earlier marks in Ireland and elsewhere in relation to the

goods for which the marks are registered. The Opponent states it has a substantial

reputation in Ireland and in Europe under these earlier marks and that they are entitled to

protection under the Paris Convention as well-known trade marks.

Trade Mark

Number

Goods

KEEGUARD

001608322

Class 6: Metal tubing (none being boiler tubes or

parts of machines); connectors; brackets and

support brackets; keys; handrails and handles; parts

and fittings for all the aforesaid goods.

KEEGUARD

CONTRACTOR

011018991

Class 6: Metal tubing; metal tube and metal pipe

fittings; metal fittings for joining tubes and

structures assembled from such tubes, pipes and

fittings; perimeter protection systems and

equipment; roof edge fall protection systems;

articles of metal for arresting the fall of persons

from structures; railings, hand rails and grab rails;

guard rails, barriers; safety barriers; connectors;

support brackets; counterbalances; base weights;

base plates; clamps; anchors and anchoring

systems; fixing, fastening, clamping and anchoring

devices; parts and fittings for the aforesaid.

Class 9: Counterbalances; base weights.

Class 20: Anchors and anchoring devices; base

plates and weighted bases not of metal.

6. The Opponent raises objection to the present application under various Sections of the

Act, which I shall summarise as follows:

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- Section 8(1)(a) – the mark is not capable of acting as a trade mark;

- Section 8(1)(b) – the mark is devoid of any distinctive character;

- Section 8(1)(c) – the mark consists exclusively of indications which serve to designate

the characteristics of the goods for which registration is sought;

- Section 8(1)(d) – the mark consists exclusively of indications which have become

customary in the trade;

- Section 8(3)(b) – the mark is of such a nature as to deceive the public;

- Section 8(4)(a) – use of the mark is prohibited by law;

- Section 8(4)(b) – the application was made in bad faith;

- Section 10(2)(b) – likelihood of confusion on the part of the public, and likelihood of

association with the Opponent’s trade marks;

- Section 10(3) – use of mark would take unfair advantage of or be detrimental to the

distinctive character or reputation of the Opponent’s marks;

- Section 10(4)(a) - use of mark is liable to be prevented by virtue of any rule of law

protecting an unregistered trade mark or other sign.

- Sections 37(2) and 42(3) – the application has failed to satisfy the requirements of

registration in that the Applicant does not use or have a bona fide intention of using

the mark in relation to all of the goods covered by the application.

7. This is an extensive list and it was abundantly clear from the outset that many of the

grounds cited simply could not succeed or would not be pursued, or supported by either

evidence or arguments, during the course of these proceedings. The inclusion of such

grounds is of zero benefit to the Opponent, but may have an adverse effect on the

Opponent when the issue of costs is being determined. Therefore, I would (again) advise

parties to focus their oppositions on relevant and legitimate grounds.

Counter Statement

8. In its Counter Statement the Applicant states it was established in 1981, specialises in

tubular fittings and structures, and has carried on a business supplying fall protection

equipment, roof edge protection barriers and safety guardrails since that date. In recent

years the Applicant has added building maintenance units to its portfolio. Other than

offering this background information regarding its business, the Applicant states it has