QUIN AND DONNELLY - 241609

• Date: 10 April 2014
• Administrative Decision Number: 241609
• opponent: SONOLE DESIGNS LIMITED & NENA MODELS (HOLDINGS) LIMITED
• Section: Trade Marks Act, 1996 - 2008-2017

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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. 241609 and in the matter of an

Opposition thereto.

GUNA DESIGNS LIMITED Applicant

SONOLE DESIGNS LIMITED Opponent

NENA MODELS (HOLDINGS) LIMITED Opponent

The Application

1. On 22 April, 2009 (the “relevant date”), Guna Designs Limited, of Unit 16, Fingal Business

Park, Jamestown Road, Dublin 11, Ireland, made application (No. 2009/00735) under Section

37 of the Trade Marks Act, 1996 (“the Act”) to register this sign

as a trade mark in respect of the following goods:

Class: 18

Leather and imitations of leather, and goods made of these materials and not included in other

classes; animal skins, hides; trunks and travelling bags, umbrellas and parasols;

Class: 25

Clothing, footwear, headgear;

Class: 26

Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles, artificial

flowers.

2. The application was subsequently accepted for registration and advertised accordingly under

No. 241609 in Journal No. 2132 dated 2 September, 2009.

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3. Notices of Opposition to the registration of the mark pursuant to Section 43 of the Act were filed

on 27 November, 2009 by SONOLE DESIGNS LIMITED, of Hillhead, Castlefin, Co. Donegal,

Ireland (hereinafter referred to as “Sonole”) and by NENA MODEL (HOLDINGS) LIMITED

of Castlefin, Lifford, Co. Donegal, (hereinafter referred to as “Nena Models"). The Applicant

filed a counter-statement on 25 February, 2010 and evidence was, in due course, filed by the

parties under Rules 20, 21, 22 and 23 of the Trade Marks Rules, 1996 (“the Rules”).

4. The oppositions became the subject of a hearing before me, acting for the Controller, on 25

April, 2013. The parties were notified on 16 October, 2013 that I had decided to uphold the

opposition 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 requests by the Opponents and the

Applicant in that regard pursuant to Rule 27(2) of the Rules.

5. Sonole was incorporated in 2001 by its holding company, Nena Models, for the express

purpose of manufacturing, distributing and selling garments and accessories under the QUIN

AND DONNELLY mark, which it began doing in 2002. While separate oppositions were

launched by Sonole and Nena Models, in effect both were lodged by the proprietor of the two

companies (Mr. Paul Sharma). Both are based on identical grounds and, in truth, there was no

possibility of one failing while the other succeeded – both would either succeed or both would

fail. At no time during these proceedings did the “Opponents” offer anything in evidence or

argument to differentiate one opposition from the other. As such, in my opinion, the lodging of

two oppositions by the same party, supported by identical evidence and argument, was not

warranted and resulted in unnecessary duplication and increased costs for the Applicant and for

this office.

6. One Hearing was held and this document comprises the written grounds of the decision in

effect of both oppositions.

Grounds of the Opposition

7. In their Notices of Opposition the Opponents state that they enjoy unregistered rights in the

Applicant’s mark and, by virtue of an agreement with the Applicant, the Opponents have used

the Applicant’s mark in the course of its business in Ireland and the United Kingdom, since

2002, for goods for which the Applicant proposes to register the mark. The Opponents say they

have built up a substantial reputation and goodwill in the Applicant’s mark and that since 2002

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the mark denotes both to the trade and the public goods provided by the Opponents or entities

with its consent and the consent of the Applicant.

8. The Opponents then raise objection to the present application under a number of grounds, as

follows:

(a) The Applicant’s mark offends against the provisions of Section 10(4)(a) of the Act to the

extent that the Opponent enjoys unregistered rights in the Applicant’s mark sufficient to

enable the Opponents to prohibit the use of the Applicant’s mark in the State;

(b) The Applicant’s mark is calculated to deceive and to lead to the Applicant’s goods being

passed off as, or mistaken for, goods provided by or for the Opponent and, accordingly, is

liable to be prevented by virtue of the law of passing off and would therefore offend against

the provisions of Section 10(4)(a) of the Act;

(c) The Applicant’s mark should be refused to the extent that the application for registration is

made in bad faith by the Applicant. There exists an agreement between the Applicant and

the Opponents whereby ownership of the Applicant’s mark is in fact shared between the

Applicant and the Opponents. As such the Applicant is prevented from applying for

registration of the mark on the basis that it does not have full legal and beneficial title to the

mark. In covertly applying for the Applicant’s mark without the permission of the Opponent

the Applicant’s application is made in bad faith;

(d) The Applicant’s mark is not capable, in relation to the goods in respect of which it is

proposed to be registered, of distinguishing the said goods from those of other undertakings

and registration of the mark would offend against Section 6 and Section 8 of the Act;

(e) The proposed use of the Applicant’s mark is of such a nature as to deceive the public,

particularly as to the nature, quality or geographical origin of the goods for which

registration is sought and therefore the application offends against Section 8 of the Act;

(f) Registration of the Applicant’s mark would obstruct or prejudice the legitimate conduct of

the Opponent’s business. Registration should be refused as being contrary to the provisions

of the Act in accordance with the judgement and/or discretion of the Controller;

(g) The Applicant’s mark should be refused to the extent that its use is prohibited in the State by

any enactment or rule of law or by any provision of Community law including any rule of

law protecting an unregistered mark;

(h) Registration of the Applicant’s mark is contrary to Council Directive No. 89/104 EEC to

approximate the laws of the Member States relating to trade marks;