PINERGY - 248236

Date01 September 2015
Administrative Decision Number248236
SectionTrade Marks Act, 1996 - 2008-2017
In the matter of an application for registration of Trade Mark No. 248236 and in the matter of an
Opposition thereto.
(Represented by William Fry Solicitors)
(Represented by Cruickshank & Co.)
The Application
1. On 6 December, 2012 (the relevant date), PrePayPower Limited, of 1st Floor, 19 Rock Hill,
Blackrock, County Dublin, Ireland made application (No. 2012/02113) under Section 37 of the
Trade Marks Act, 1996 (“the Act”) to register the sign PINERGY (“the disputed mark”) as a
Trade Mark in respect of the following services in Class 39:
Supply, storage, metering, transmission, distribution, delivery and transportation of
energy, gas, gaseous fuel, electricity, oil and fuels; transport; packaging, storage and
delivery of goods; advisory, information and consultancy services relating to the supply
and distribution of gas, electricity and other forms of energy.
2. The application was accepted for registration and advertised accordingly under No. 248236 in
Journal No. 2223 dated 27 February, 2013.
3. Notice of Opposition to the registration of the mark pursuant to Section 43 of the Act was filed
on 1 May, 2013 by New Measured Power Limited, of Riverside One, Sir John Rogerson’s
Quay, Dublin 2, Ireland in relation to all the services covered by the application. The Applicant
filed a counter-statement on 2 August, 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”).
4. The opposition became the subject of a hearing before me, acting for the Controller, on 28 May,
2015. The parties were notified on 15 July, 2015 that I had decided to uphold the opposition, on
the basis that the application was made in bad faith, and to refuse the registration of the mark. I
now state the grounds of my decision and the materials used in arriving thereat in response to a
request by the Applicant in that regard pursuant to Rule 27(2) of the Rules.
Grounds of the Opposition
5. In its Notice of Opposition the Opponent states that New Measured Power Limited is a pay-as-
you-go electricity provider trading under the business name PINERGY, which was registered on
15 October, 2012 offering low cost electricity to households. The Opponent’s first use of the
trade mark PINERGY was on 25 September, 2012 in Spar, Grand Canal Street, Dublin
facilitated by Payzone online payments. 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(4)(a) use of mark is prohibited by enactment or rule of law;
- Section 8(4)(b) the application was made in bad faith;
- Section 10(4)(a) use of the mark is liable to be prevented by virtue of the law of
passing off;
- Sections 37(2) and 42(3) the Applicant is not using the mark applied for, nor does he
have a bona fide intention to use the mark.
6. In its Counter Statement the Applicant admits the Opponent is currently providing services as
an electricity service provider, but denies any knowledge of the Opponent providing such
services or any other services prior to the date of application of the disputed mark. The
Applicant denies each and every ground of opposition.
Rule 20 Evidence
7. Evidence submitted by the Opponent under Rule 20 consists of a Statutory Declaration and
supporting evidence, by way of seventeen exhibits labelled JW1” to JW17, dated 6 February
2014, of Jeff Ward, Head of Finance for New Measured Power Limited.
8. In his declaration Mr. Ward states that his company has traded as PINERGY since at least
October 2012 and a business name registration for PINERGY was completed on 15 October,
2012. He attaches at Exhibit “JW1” details of that registration. He says in 2012 his Company
saw an opportunity to provide an alternative way for Irish energy consumers to pay for
electricity. He explains that alternative way uses innovative technology relatively new to the
Irish market that allows the customer to purchase electricity on a pay-as-you-go. Much like a
mobile phone the customer can purchase “top-ups” online, by telephone, via SMS (texts) and in
Payzone outlets nationwide. This means there are no bills, usage is paid for in advance, there is
no doubt as to what the customer’s electricity costs are and it allows the customer to track their

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