Date10 April 2014
Administrative Decision Number241609
SectionTrade Marks Act, 1996 - 2008-2017
In the matter of an application for registration of Trade Mark No. 241609 and in the matter of an
Opposition thereto.
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
2. The application was subsequently accepted for registration and advertised accordingly under
No. 241609 in Journal No. 2132 dated 2 September, 2009.
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
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
(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 Applicants 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;

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