Handipak - 248621

• Date: 26 August 2015
• Administrative Decision Number: 248621
• opponent: Cofresco Frischhalteprodukte & Co. KG
• Section: Trade Marks Act, 1996 - 2008-2017

1

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. 248621 and in the matter of an

Opposition thereto.

RONAN BYRNE Applicant

COFRESCO FRISCHHALTEPRODUKTE & CO. KG Opponent

(Represented by Tomkins & Co.)

The Application

1. On 18 February, 2013 Ronan Byrne (the “Applicant”), of 25 Carysfort Downs, Blackrock,

County Dublin made application (No. 2013/00287) under Section 37 of the Trade Marks Act,

1996 (“the Act”) to register (hereafter “handi·pak logo”) in respect

of “Plastic bags for refuse/rubbish/household waste; absorbent sheets of paper or plastic for

foodstuff packaging; films for wrapping foodstuffs” in Class 16. The application was accepted

for registration and advertised accordingly under No. 248621 in Journal No. 2229 dated 22

May, 2013.

2. A Notice of Opposition to the registration of the marks pursuant to Section 43 of the Act was

filed on 18 July, 2013 by Cofresco Frischhalteprodukte & Co. KG (hereinafter “Cofresco”),

of Ringstrasse 99, Minden, Germany. The Applicant filed a counter-statement on 30 July,

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”).

3. The Opponent filed written submissions in lieu of attending a hearing in the matter, while the

Applicant attended the Hearing. Acting for the Controller, I decided to dismiss the opposition

and to allow the application to proceed to registration. 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 Trade Mark Rules 1996.

2

Grounds of the Opposition

4. In its Notice of Opposition the Opponent refers to its proprietorship of Community Trade

Mark (CTM) No. 006111975 (hereinafter “handy bag logo”) with an effective

registration date of 9 July, 2007 in respect of the following goods:

Class 6

Aluminium foil; plastic-coated aluminium foil; metal foil materials for

packaging; grill pans; baking and roasting tins of aluminium foil;

inserts of aluminium foil for baking tins and pans; closing clips of

metal. Metal foil materials for packaging. Closing clips of metal.

Class 7

Vacuum cleaner bags (included in class 7); papers and nonwovens for

vacuum cleaner bags, being starter material for the manufacture of

vacuum cleaner bags (included in class 7); filters for vacuum cleaners,

namely air, pollen and motor filters, included in class 7.

Class 16

Packaging material of paper, cardboard and/or plastic in the form of

foils, tubes, sheets, rolls, bags, boxes and containers for household and

kitchen use for storing, baking, roasting, cooking, keeping fresh and

freezing; bags for ice cubes; labels; implements for writing on films;

baking and roasting tins of paper; baking parchment; rubbish bags of

paper and/or plastic; waste sacks of paper and/or plastic; gloves.

Class 17

Microwave foil.

Class 21

Household or kitchen utensils and containers (not of precious metals or

coated therewith); freezer tins and boxes; plastic tableware; plastic

drinks vessels; closing clips of plastic; cake moulds, baking and

roasting tins; grill pans; cooker hoods; splash-guard covers; foil

dispensers; bottle warmers, included in class 21; plastic containers and

casings filled with fluid (gel) for cooling or heating drinks and keeping

drinks hot and/or cold.

The Opponent then raises objection to the present application under Sections 8, 10, 37 and 42

of the Act, which I shall summarise as follows:

- Section 8(1)(c) – the mark consists exclusively of signs or indications which may

designate characteristics of the goods;

- Section 8(1)(d) – the mark consists exclusively of signs or 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 mark is prohibited by enactment or rule of law;

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

association with the Opponent’s HANDY BAG earlier mark;

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

distinctive character or reputation of the Opponent’s mark;