In a recent decision of the Irish Patents Office, a trade mark application for ‘IRISH WATER’ in the name of Irish Water (“IW”), Ireland’s national water utility, was rejected for all the core goods and services covered by the application. The application was filed on 4 December 2012 by Bord Gáis Eireann, at that time Ireland’s national gas utility with no involvement in water supply. IW was set up in July 2013 and the application assigned to it in February 2014.
The ‘IRISH WATER’ trade mark application covered almost everything to do with water (see list below) as well as printed matter, publications and business services. The Patents Office examiner objected on the basis that ‘IRISH WATER’ is non-distinctive and descriptive for the goods and services. IW contested this at an oral hearing, resulting in the objections being waived for everything except “water, bottled water, bottled drinking water, aerated water, carbonated water, mineral water, sparkling water, table water” in class 32. With those goods deleted, the application proceeded to publication in the Patents Office Journal on 9 April 2014, still in the name of Bord Gáis Eireann as recordal of the assignment to IW had not yet been noted on the register, although this occurred immediately thereafter.
During the 3-month opposition period a Notice of Opposition to registration of the mark was filed by a member of the public on grounds including that the mark ‘IRISH WATER’ is non-distinctive and descriptive for the goods and services covered by the application. IW denied all the opposition grounds and, as well as filing counter-arguments, offered three specific defences:
(1) On examination the same grounds were previously raised and decided in IW’s favour;
(2) An application for ‘UISCE ÉIREANN’ (the Irish language translation of ‘IRISH WATER’) was filed on the same date, which proceeded unopposed to registration and it would be inequitable to refuse registration of the identical equivalent mark ‘IRISH WATER’;
(3) The mark ‘IRISH WATER’ was in use before the trade mark application date and had acquired a distinctive character as a result of the use made of it. IW submitted evidence of this use.
The Hearing Officer decided to partially uphold the opposition and refused the ‘IRISH WATER’ trade mark application for all goods and services except “printed matter, publications, information leaflets” and “business, administration and promotional advertising services”. In respect of the refused goods and services, the Hearing Officer found the mark ‘IRISH WATER’ to be devoid of inherent distinctiveness and unable to act as a badge of origin, and unable to perform the essential function of a trade mark as the goods and services are all (Irish) water related. Furthermore, the Hearing Officer found the mark ‘IRISH WATER’ to be descriptive as it consists exclusively of the intended purpose or characteristics of the goods and services, being the commercialisation of all activities associated with (Irish) water. The Hearing Officer also rejected IW’s three defences:
(1) Even though the same grounds were considered on examination and decided in IW’s favour, that decision was taken having heard IW alone. The Hearing Officer is obliged to consider this matter afresh, without paying heed to decisions made before. Opposition proceedings occur at a different point in the process and are initiated by third parties whose evidence and arguments must be taken into account;
(2) The ‘UISCE ÉIREANN’ application was treated in the same way as the ‘IRISH WATER’ application. It was not a case of one official language being given preference over another. The fact is no-one opposed the Irish language version, whereas the English version was opposed;
(3) Although much evidence was presented by IW to support its claim of distinctiveness acquired through use, there were a number of “fatal flaws” in that most of the material post-dated the trade mark application date, and the evidence showed IW was not even established at the application date, and none of the evidence was in respect of actual trade, rather it can be categorised as media coverage, political debate and information dissemination.
This decision is not surprising given the nature of the words ‘IRISH WATER’ and the goods and services in question. The decision also highlights the requirement that, in order to benefit from the acquired distinctiveness proviso, an applicant must show genuine commercial use of the mark prior to the application date, and that preparations for use of the mark are not sufficient.
After being informed of the decision, IW went ahead and filed a new application to register ‘IRISH WATER’ as a trade mark. Presumably IW will have another go at proving distinctiveness acquired through use during the period from its launch in mid-2013 up to the new filing date, and it will be interesting to see how this fares.
Another takeaway from this decision is that the opposition was based on “absolute grounds” for refusal (the mark is non-distinctive or is descriptive) as opposed to “relative grounds” for refusal (there is an earlier conflicting trade mark right). While only trade mark right holders may file opposition on the basis of relative grounds, anyone – including a concerned citizen – may file opposition to an Irish trade mark application on the basis of absolute grounds.
List of goods and services – ‘IRISH WATER’ Trade Mark as filed on 04/12/2012
Class 6: Water pipes, water tanks, water valves all being of metal.
Class 9: Water meters, water level indicators, water level gauges, water level detection apparatus, water leakage detection alarms.
Class 11: Apparatus for filtering water, declassifying water, descaling water, apparatus for control of water supply, apparatus for purifying water, softening water, decontaminating water, apparatus for distribution of water, apparatus for supply of water for sanitary purposes, drinking water filters, drinking water supply apparatus, drinking water supply installations, pressurised water reserves, pressurised water tanks, regulation instruments for water supply, water pipes, water apparatus and installations, hot water sterilizers, water purifying units, water filtering units, water distilling units.
Class 16: Printed matter, publications, information leaflets.
Class 32: Water, bottled water, bottled drinking water, aerated water, carbonated water, mineral water, sparkling water, table water.
Class 35: Business, administration and promotional advertising services.
Class 37: Construction services relating to water supply mains and water pipes, cleaning of drains, cleaning of water cylinders, cleaning of water supply pipe work and water supply plumbing, cleaning of water tanks, installation, maintenance and repair of waterways and water installations, repair, maintenance of purifying apparatus and water pollution control equipment, water well drilling.
Class 39: Delivery, distribution and supply of water, public utilities in the nature of supplying water, public utility services in the nature of water distribution, services for the supply of water by pipeline, storage of water and reservoirs, storage of water in tanks, water distribution and supply.
Class 40: De-mineralisation of water, desalination of water, disposal of waste water for industrial processes, purification of industrial waste water, regeneration of water, rental of water filters, rental of water filtration units for commercial use, rental of water purifying apparatus, rental of water treatment equipment, treatment of waste water, treatment of water, waste and/or water treatment services, waste water reprocessing, water pollution control, water purification, water treatment.
Class 41: Educational services in relation to water, water management, water pollution, water safety, providing courses in the field of water management.
Class 42: Analysis of water, digital water marking, water quality control services.
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