HIPBABY - 242639

Date16 May 2014
Administrative Decision Number242639
opponentHIPP & CO
SectionTrade 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. 242639 and in the matter of an
Opposition thereto.
LEONA KINAHAN Applicant
HIPP & CO. Opponent
(Represented by Tomkins & Co.)
The Application
1. On 11 November, 2009, Leona Kinahan, an Irish citizen, of Curragh, Rosemount, Moate,
Co. Westmeath, Ireland made application (No. 2009/02003) under Section 37 of the Trade
Marks Act, 1996 (“the Act”) to register the sign below as a trade mark in respect of Retail
purposes (presentation of goods on communication media, for -); sales promotion for
others in Class 35.
2. The application was accepted for registration and advertised accordingly under No. 242639
in Journal No. 2147 dated 31 March, 2010.
3. Notice of Opposition to the registration of the mark, pursuant to Section 43 of the Act, was
filed on 20 June, 2010 by Hipp & Co. of Brunigstrasse, 141 CH-6072 Sachseln, Switzerland.
The Applicant filed a counter-statement on 5 October, 2010. Evidence was then filed under
Rules 20, 21 and 22 of the Trade Mark Rules, 1996 (“the Rules”). The Applicant filed
written submissions in lieu of attending at a hearing of the matter, while the Opponent
attended at a hearing on 30 October, 2013.
4. Acting for the Controller, I decided to dismiss the opposition and to allow the application to
proceed to registration. The parties were informed of my decision by way of letter dated 19
December, 2013. 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, filed on 17 January, 2014.
2
Grounds of the Opposition
5. In its Notice of Opposition the Opponent identifies itself as manufacturers and merchants of
a wide range of baby and children products, and related services. The Opponent attached to
its Notice of Opposition details of the following 5 Community Trade Marks, which the
Opponent states it has used in relation to baby and children products, and related services.
Trade Mark
Number
Classes
HIPP
004529517
3,5,8,9,10,12,16,20,21,25,29,30,44
004535001
3,5,8,9,10,12,16,20,21,25,29,30,44
005276688
3,5,8,9,10,21,24,25,44
HIPP
002208841
5,29,30,32
HiPP1
002578003
3,10,16,24,25,28,31,43,44
The Opponent raises objection to the present application under various Sections of the Act,
which I shall summarise as follows:
- Section 8(1)(b) mark devoid of any distinctive character;
- Section 8(4)(a) use of the mark is prohibited by law;
- 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,
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.
Counter-Statement
6. In its Counter-Statement the Applicant states it initially applied for the trade mark in 2009 in
respect of goods and services in classes 3,9,10,12 20,24,25,28 and 35, but did not pursue it
1
In the Notice of Opposition this was referred to as “HIPP”, but the correct trade mark is “HiPP”

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT