MOOCH - 245645

Date23 January 2015
Administrative Decision Number245645
SectionTrade Marks Act, 1996 - 2008-2017
In the matter of an application for registration of Trade Mark No. 245645 and in the matter of an
Opposition thereto.
(Represented by Denis I. Finn Solicitors)
(Represented by MacLachlan & Donaldson)
The Application
1. On 14 April, 2011 (the “relevant date”) Razneck Limited, of Rossanagh, Rathnew, Co.
Wicklow, Ireland made application (No. 2011/00670) under Section 37 of the Trade Marks
Act, 1996 (“the Act”) to register these marks
as a series of three distinct trade marks in respect of the following goods and services:
Class 29: Prepared meals consisting predominantly of soups, potato crisps, milk
and milk products, milkshakes, milk drinks, drink flavoured with fruit bases and
having a milk base, milk based drinks containing fruit (milk predominating), fruit
juices, yoghurt, preparations for making yoghurt, dairy products, fruits, all being
preserved, all included in Class 29.
Class 30: Coffee, coffee drinks, tea, tea drinks, cocoa, chocolate drinks, fruit
sauces, bread, pastry, cakes, sweets and confectionery, ices; honey, yeast, baking-
powder; salt, mustard; vinegar, sauces (condiments); spices; ice; frozen yoghurt
and frozen yoghurt based desserts combined with fruit and sauces.
Class 43: Services for providing food and drink; restaurant; milk bar; catering
services; cafeteria services; snack bar services; bar services; information services
regarding the provision of food and drink; information services regarding
catering, booking and reservation services for restaurants or milk bars;
consultancy services associated with operating restaurants, cafes, cafeterias,
coffee shops, bars, milk bars, restaurants, snack bars, catering or other
establishments or facilities engaged in providing food or drinks.
2. The application was accepted for registration and advertised accordingly under No. 245645
in Journal No. 2184 dated 31 August, 2011.
3. Notice of Opposition to the registration of the mark, pursuant to Section 43 of the Act, was
filed on 28 November, 2011 by Dairyglen Products Limited, of Unit 6, Sounthern Cross
Business Park, Boghall, Bray, Co. Wicklow, Ireland. The Applicant filed a counter-
statement on 7 February, 2012. Evidence was then filed under Rules 20, 21 and 22 of the
Trade Mark Rules, 1996 (“the Rules”). Both parties filed written submissions in lieu of
attending at a hearing of the matter, with the Opponent alone filing written submissions in
4. Acting for the Controller, I decided to uphold the opposition in respect confectionery; ices;
frozen yoghurt and frozen yoghurt based desserts combined with fruit and sauces” in Class
30, but to allow the application to proceed to registration in respect of all other goods and
services. The parties were informed of my decision by way of letter dated 31 July, 2014. I
now state the grounds of my decision and the materials used in arriving thereat in response
to a request by both parties in that regard pursuant to Rule 27(2) of the Trade Mark Rules
Grounds of the Opposition
5. In its Notice of Opposition the Opponent identifies itself as manufacturers and merchants of
ice cream, preparations for making ice cream, confectionery and related products. The
Opponent attached to its Notice of Opposition details of the following 2 trade marks, which
the Opponent states it has used in relation to the aforementioned products.
Trade Mark
Mark Details
Class, goods and services
Irish trade mark no.
227689 registered as
of 22 July 2003
Class 30: Ice cream, frozen
confectionery, preparations in this
class for making the aforesaid goods.
(SMOOCH logo)
Community trade
mark no. 009390071
registered as of 21
September 2010
Class 29: Milk and drinks
containing milk and/or milk
products; milk shakes; milk shakes
containing confectionery and/or
other ingredients, the milk
predominating; smoothies consisting
predominately of yoghurt and/or
milk; preparations for making milk
shakes; ingredients for milk shakes;
preparations and ingredients in class
29 for making smoothies; desserts in

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