Seán's Brown Bread - 246626 and 246627

• Administrative Decision Number: Seans-Brown-Bread
• Date: 27 May 2015
• opponent: Superquinn 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 applications for registration of Trade Mark Nos. 246626 and 246627 and in

the matter of Oppositions thereto.

SEÁN WALSH Applicant

SUPERQUINN LIMITED Opponent

The Applications

1. On 26 January, 2012, Seán Walsh, of 32 Stoneyhurst, Dooradoyle, Limerick, Ireland

made applications under Section 37 of the Trade Marks Act, 1996 (“the Act”) to register

Seán’s Brown Bread and Seán’s Brown (Nos. 2012/00139 and 2012/00140

respectively), as trade marks in respect of “Brown Bread” in Class 30.

2. The applications were accepted for registration and advertised accordingly under Nos.

246626 and 246627 in Journal No. 2199 dated 28 March, 2012.

3. Notices of Opposition to the registration of the marks pursuant to Section 43 of the Act

were filed on 27 June, 2012 by Superquinn Limited, of Musgrave House, Ballycurreen,

Airport Road, Cork, Ireland. The Applicant filed a counter-statement on 21 September,

2012. The Opponent filed evidence under Rule 20 of the Trade Marks Rules, 1996 (“the

Rules”) on 24 June, 2013. The Applicant filed evidence under Rule 21 of the Rules on 17

December, 2013. The Opponent filed evidence in reply under Rule 22 on 17 April, 2014.

A Hearing of the matter was held on 11 November, 2014.

4. While there are two distinct applications and corresponding oppositions, the Notice of

Opposition, Counter Statement and evidence submitted in both cases were identical to

each other in all material respects. Furthermore, at the Hearing, no argument was

advanced in support of either side that related specifically to one of the trade marks at

issue and not the other.

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5. Both parties attended the Hearing following which I decided to uphold both oppositions

and to refuse to allow the applications to proceed to registration. For the sake of brevity

and conciseness I now state the grounds of both my decisions and the materials used to

arrive thereat in response to a request by the Opponent in that regard pursuant to Rule

27(2) of the Trade Mark Rules 1996.

Grounds of the Opposition

6. In its Notices of Opposition the Opponent states it, and its predecessors in title, has for

many years, carried on business as a supermarket, both in-store and online, for a broad

range of consumer goods, including food and beverages. In addition, the Opponent states

it is a manufacturer and retailer of a variety of foodstuffs and beverages. The Opponent

states that, as early as 1995, it has extensively used the trade mark SEÁN’S BROWN in

connection with bread and bread products. The earlier mark has long denoted, both to the

trade and the public, goods rendered by the Opponent and distinguishes such goods from

the like goods of others.

7. The Opponent then raises objection to the two applications under various Sections of the

Act, which I shall summarise as follows:

- Sections 6 and 8(1)(a) – the marks applied for are not capable of distinguishing the

goods or services of the Applicant from the goods or services of other undertakings;

- Section 8(1)(b) – the marks are devoid of distinctive character;

- Section 8(1)(c) – the marks consist exclusively of signs or indications which may serve

in trade to designate the kind, intended purpose or other characteristics of the goods;

- Section 10(1) – the marks are identical to the Opponent’s earlier mark and the goods

for which the registrations are sought are identical to those for which the earlier mark

is protected;

- Section 10(2)(a) – likelihood of confusion on the part of the public, and likelihood of

association with the Opponent’s trade mark;

- Section 10(3) – use of marks would take unfair advantage of, or be detrimental to,

distinctive character or reputation of the Opponent’s mark;

- Section 10(4)(a) - use of marks is liable to be prevented by virtue of any rule of law

protecting an unregistered trade mark or other sign;