OsKaRs - 256705

• Administrative Decision Number: 256705
• Date: 05 September 2024
• Section: Trade Marks Act, 1996 - 2018 - Current
• opponent: The Academy of Motion Pictures, Arts and Sciences

1

DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE

MARKS IN PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

BETWEEN

Kevin Rowe (Holder/Proprietor)

and

The Academy of Motion Pictures, Arts and Sciences (Applicant for Declaration of

Invalidity)

CONCERNING

Trade Mark No. 256705

The registered trade mark.

1. Kevin Rowe, of 20 Millrace Walk, Saggart, Co. Dublin is the registered holder of the

Trade Mark, OsKaRs, which is registered under TM No. 256705 in the following classes:

Class 36: Fundraising; Charitable fundraising; Charitable fundraising services; Charitable

fundraising by means of entertainment events.

Class 41: Entertainment; Live entertainment; Cinema entertainment; Theatre

entertainment; Cinematographic entertainment services.

The mark in question is an Irish Trade Mark that was registered on 23/07/2017 with a

registration date of 12/01/2017.

Application for declaration of invalidity

2. On 17th June 2020, The Academy of Motion Picture Arts and Sciences, an American

company of 8949 Wilshire Boulevard, Beverley Hills, California, 90211-1972 applied

under Section 52 of the Trade Marks Act, 1996 for a Declaration of Invalidity in respect

of the registration and included with the application a statement of the grounds on which

it was made. Having outlined the background and nature of their business, the Applicant

contended that the Proprietor’s TM No. 256705, “OsKaRs”, offends against their earlier

EUTM 002931038, “OSCAR”, for services in Class 41, TM 200015, “OSCAR”, for

services in Class 41, TM149097 “OSCAR”, for goods in Class 9 and TM140893

“OSCAR”, for good in Class16. The action was based on the provisions of Sections

10(2)(b), 10(3) and 10(4) of the Act.