High Court attempts to unravel woolly trademark dispute

A company that markets and sells products using images of cartoon sheep characters under the trade mark “Wacky Woollies” has sued another firm over putting products on the market under the name “Woolie Wellies”.

The Shamrock Gift Company [Trading House], with registered offices at Fonthill Industrial Park, Dublin, has sued Allied Imports Ltd, based at Northwest Business Park, Ballycoolin, Dublin, on grounds including alleged breach of its Community Trade Mark and passing off.

Mr Justice Brian McGovern granted an application by Paul Coughlan BL, for Shamrock, to fast-track the action in the Commercial Court. Jonathan Newman SC, for the defendant, consented to the matter being fast-tracked and said his client will be filing a full defence.

Novelty items

In its action, Shamrock says it has been in business since 1998 and markets a “vast array” of merchandise, including souvenir, gift and novelty items.

Since 2007, it has promoted, marketed and sold various products under the name and trade mark, Wacky Woollies, it said. Images of cartoon sheep characters on those products made them “eye-catching, amusing and/or endearing” from the perspective of prosective purchasers.

The brand was so popular the number of products has risen from 11 in 2007 to 108 last year with another 16 to be added to the range this year, it said. Some 80 per cent of products are sold in about 178 retail outlets here and the rest in outlets in the UK, Germany, US and Dubai.

Shamrock claims the defendant has put products on the market under the sign Woolie Wellies which, it is alleged, is confusingly similar to Wacky Woollies.

The Woolie Wellies products include magnets, a rugby ball, a mug, a pencil-shape pencil case, a jumbo pen and charm keyrings.

Products on sale

Images of such products were contained in a brochure of the defendant circulated at the RDS Showcase trade show last January, Shamrock claims. Some of the complained-of products were found on sale in three shops in Dublin, Donegal and Killarney but were removed at the request of the plaintiff, it adds.

It alleges the sign “Woolie Wellies” and the use of images of cartoon sheep characters on the defendant’s products amounts to appropriation of the plaintiff’s goodwill and misrepresnation likely to lead members of the trade and public to confuse the Wacky Woollies products with those of the defendant.

Alleged infringement

Shamrock is seeking orders restraining the alleged trademark infringement and passing off and requiring the defendant deliver up the alleged infringing products. It also wants the defendant to account for any profits of the disputed products and damages.