Handipak - 248621

Date26 August 2015
Administrative Decision Number248621
opponentCofresco Frischhalteprodukte & Co. KG
SectionTrade Marks Act, 1996 - 2008-2017
In the matter of an application for registration of Trade Mark No. 248621 and in the matter of an
Opposition thereto.
(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.
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;

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