THE BROKER - 246848

• Date: 20 February 2015
• Administrative Decision Number: 246848
• opponent: PROFESSIONAL INSURANCE BROKERS ASSOCIATION
• 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. 246848 and in the matter

of an Opposition thereto.

HOLYROOD PUBLICATIONS LIMITED Applicant

(Represented by Anne Ryan & Co.)

PROFESSIONAL INSURANCE BROKERS ASSOCIATION Opponent

(Represented by Smyth Solicitors)

The Application

1. On 1 March, 2012, Holyrood Publications Limited, of Units 134-136, Baldoyle

Industrial Estate, Dublin 13, Ireland made application (No. 2012/00360) under Section

37 of the Trade Marks Act, 1996 (“the Act”) to register “The BROKER” as a trade

mark in respect of “Insurances and financial services publications” in Class 16.

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

246848 in Journal No. 2202 dated 9 May, 2012.

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

was filed on 18 July, 2012 by Smyth Solicitors, of 120 Pembroke Road, Ballsbridge,

Dublin 4, Ireland on behalf of its client Professional Insurance Brokers Association

(hereinafter “PIBA”). The Applicant filed a counter-statement on 24 October, 2012.

Evidence was then filed under Rules 20, 21 and 22 of the Trade Mark Rules, 1996

(“the Rules”). Both parties attended a Hearing of the matter on 30 September, 2014.

4. Acting for the Controller, I decided to dismiss the opposition and to allow the

application to proceed to registration. The parties were informed of my decision by

way of letter dated 17 October, 2014. 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 Trade Mark Rules 1996, filed on 17 October,

2014.

2

Grounds of the Opposition

5. In its Notice of Opposition PIBA identifies itself as a trade association for insurance

and mortgage brokers and financial advisers in Ireland and is the publisher of a long-

running trade magazine which has reached its 37th edition and which was rebranded

The Broker in 2011. Three editions – Winter 2011, Spring 2012 and Summer 2012 –

have been published under the new name. The Opponent attached copies of the covers

of these three editions to its Notice of Opposition.

6. The Opponent states the Applicant informed the Opponent of the application for the

trade mark by letter of 8 March 2012, to which the Opponent replied on 27 March,

2012. Copies of both letters were also attached to the Notice of Opposition. The

Opponent goes on to state the Applicant is the proprietor of the registered trade mark

“Irish Broker Magazine” (registration no. 230006), and uses it on a trade magazine of

the same name, which is published at the direction of the Irish Brokers Association

(hereinafter “IBA”), a trade association which competes directly with the Opponent.

7. The Opponent then goes on to raise objections to the present application on the

grounds that the application was made in bad faith and that the use of the trade mark is

liable to be prevented by the law of passing off, should the Applicant publish a trade

magazine under the name “The BROKER”.

8. In its Notice of Opposition the Opponent contends the object of the Applicant’s

application is not for the purposes of trading under the name “The BROKER”. The

Applicant already publishes a magazine under the title “The Irish Broker” and the

Applicant’s objective is to stymie PIBA’s continued, bona fide use of the term “The

Broker”, as the title of its publication. As such it is a so-called “ghost” mark. The

Opponent claims any objective reading of the Applicant’s letter of 8 March, 2012 to

PIBA and the contemporaneous, if misguided, registration of “The Broker” as a

business name, are evidence of the Applicant’s attempts to block the use of the mark

by PIBA. The Applicant has no intention of using the trade mark applied for but

merely sees the title, The Broker, as being synonymous (and this is not accepted by the

Opponent) with its already registered trade mark, Irish Broker Magazine. This is not

the function or aim of trade mark law or the system of registering trade marks.