Dead in the Water

Water tapIrish Water has had a lot of difficulties of late. Most people will be aware that Irish Water is the State’s national water utility which is responsible for providing water services throughout Ireland. However, upon the formation of this company there were nationwide protests by many people who felt that they should not have to pay for water. Recently, the Government, which introduced the water charges, agreed to suspend such payments on the back of a poor electoral showing.

To add to the utility’s problems, the Irish Patents Office has refused to register IRISH WATER as a trade mark for many goods and services. The application to register that trade mark in December 2012 was filed by Bord Gais Eireann and was later assigned to Irish Water in 2014. The Patents Office raised objections that the words were descriptive but following an ex parte Hearing, the Patents Office permitted the application to proceed to acceptance, except in relation to beverages, but the application was then opposed by an individual, Dr. Eddie O’Gorman, who argued that the words IRISH WATER were incapable of distinguishing the goods and services of Irish Water from companies who are or will provide Irish water related services and that the words are also descriptive of such goods and services which included water pipers, water meters, apparatus for filtering water, distribution and supply of water and many other water related goods and services. These were similar to the objections which the Patents Office had previously raised but which had been overcome by Irish Water at an earlier Hearing. In response to the opposition, Irish Water argued that the Trade Mark IRISH WATER had been used in Ireland and had established notoriety and recognition in the mind of the public and had thus acquired distinctiveness through such use and that the Patents Office has already decided on this matter in Irish Water’s favour at a previous Hearing.

The Hearing Officer in the opposition proceedings, however, indicated that he was obliged to consider the matter afresh, without paying any heed to whatever decisions were made heretofore. Also, the opposition proceedings occurred at a different point in the process and was initiated by a third party whose evidence and arguments must be taken into account. Therefore, in deciding this matter, the Hearing Officer was satisfied that due process was being served and that the decision laid down could not be considered to be unjustified or inequitable to the Applicant.

The Hearing Officer then went on to hold that all of the goods/services covered by the application, other than “printed matter, publications and information leaflets, and business, administration and promotional advertising services” related to water. Consequently he found that the mark was descriptive for such goods/services.

The Applicant argued the mark IRISH WATER had penetrated the consciousness of the general public prior to the date of application. However, the Hearing Office found that the dissemination of information regarding the future role and responsibilities of Irish Water and the significant level of media coverage and political debate which took place prior to the establishment of Irish Water could not be interpreted as use of the mark IRISH WATER. Furthermore, while the Irish public was aware that water charges were on the way and that there were many protests, the Hearing Office held that at the date of application, the only things the average consumer was aware of was that a public water utility (most likely to be called Irish Water) was being established, and that if the protests failed, water meters would be installed and water charges introduced. The Hearing Office held that this did not equate to the average consumer associating all the goods and services mentioned in the application with the Applicant’s mark IRISH WATER. In fact, other than providing a public water utility and associated activities, there was nothing to suggest to consumers that the Applicant would be trading in, as distinct from using for its own purposes, most of the goods and services mentioned in the application. The Hearing Officer held that to establish notoriety under the trade mark there must have been genuine use prior to the date of application, such use having established a presence in the marketplace for the goods and services at issue and he was satisfied no goods or services were traded by the Applicant under the mark IRISH WATER and no market presence was established prior to the date of application (2012) and he therefore rejected the application.

There is of course the possibility that a later filed application might now be found acceptable for registration based upon the reputation under or dare we say notoriety of the name IRISH WATER but for the time being the application, like water charges themselves, is dead in the water for most of the goods and services covered by the application.

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