SKYVOLT - 241635

• Administrative Decision Number: 241635
• opponent: BRITISH SKY BROADCASTING GROUP PLC
• Section: Trade Marks Act, 1996 - 2008-2017

1

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. 241635 and in the matter

of an Opposition thereto.

STONE ELECTRICAL LIMITED Applicant

BRITISH SKY BROADCASTING GROUP PLC Opponent

The Application

1. On 26 May, 2009 (the relevant date), Stone Electrical Limited, an Irish company, of

Kilmurray, Redcross, Co. Wicklow, Ireland made application (No. 2009/00924) under

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

(hereafter referred to as “SKYVolt” or the “Disputed Mark”) as a Trade Mark in respect

of the following goods and services:

Class 7: Generators of electricity

Class 9: Photovoltaic cells

Class 37: Building construction, repair, installation services, electric appliance

installation & repair

2. The application was accepted for registration and advertised accordingly under No.

241635 in Journal No. 2133 dated 16 September, 2009.

3. Notice of Opposition to the registration of the mark pursuant to Section 43 of the Act

was filed on 15 December, 2009 by British Sky Broadcasting Group PLC (“BSkyB”), of

Grant Way, Isleworth, TW7 5QD, Middlesex, United Kingdom, in relation to all the

goods and services covered by the application. The Applicant filed a counter-statement

2

on 1 March, 2010 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 4

December, 2013. The parties were notified on 24 January, 2014 that I had decided to

dismiss the opposition and to allow the application to proceed to registration. I now

state the grounds of my decision and the materials used in arriving thereat in response to

a request by the Opponent in that regard pursuant to Rule 27(2) of the Rules.

Grounds of the Opposition

5. In its Notice of Opposition the Opponent states it is the proprietor of a number of

Community Trade Mark (CTM) Registrations and Application, and an International

Registration designating Ireland, for the word SKY, and have used the marks throughout

Ireland and the European Union in relation to a wide range of goods and services

covered by the said registrations and application. A summary of the marks upon which

the Opponent relies, confined to the classes at issue, is contained in Annex 1. The

Opponent states it has a substantial reputation in Ireland and the European Union in its

earlier marks, which are entitled to protection under the Paris Convention as well-known

trade marks.

6. The Opponent then raises objection to the present application under certain sections of

the Act, which I shall summarise as follows:

Section 8(4)(a) – use of the mark is prohibited in the State by any enactment or rule

of law or by any provision of Community law;

Section 10(2)(b) – likelihood of confusion on the part of the public, including a

likelihood of association with the Opponent’s Trade Marks;

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

distinctive character or reputation of the Opponent’s Trade Marks;

Section 10(4) – the use of the mark in the State is liable to be prevented by any rule

of law protecting an unregistered trade mark or other sign;

Sections 37(2) and 42(3) – the Applicant has failed to satisfy the requirements of

registration in that the Applicant does not use or have a bona fide intention of using

the mark;

The application should be refused in the Controller’s discretion.