The IP Factor

In proceedings involving rival trademark applications under Section 29 of the Israel Trademarks Ordinance 1972, the Israel Registrar of trademarks has allowed both the word mark COSABELLA and the stylized mark COCABELLA submitted by a different applicant, to proceed to examination. Both marks relate to clothing, but Cosabella is an International brand for luxury lingerie, whereas Cocabella is aimed at clothing for the teenage market. The Examiner has ruled that there is no case of passing off to answer for, since Cocabella is an acronym of the name of the designer, Bella Kokaraev and thus applicant has good reason for choosing name. The earlier submitted COSABELLA mark has had minimal exposure in Israel, as is available from one local store only. BACKGROUND In September 2004 Luemme Inc, a multinational fashion lingerie company, applied to register the trademark COSABELLA for clothing in Class 25 of the Nice Classification (Application 174521). In February 2005 Bella Kokaraev, a local manufacturer of clothing for teenagers, applied to register the stylized mark COCABELLA for clothing (Application 178831). Luemme claimed goodwill in its mark, which is registered in many countries, and submitted evidence of its volume of sales and advertising efforts worldwide. Luemme further argued that its mark, albeit unregistered in Israel, was well known in that country. Therefore, the registration of a similar mark for goods of the same description was precluded. Kokaraev argued that her mark, which had been in use since 2003 and was an acronym of her first and last name, was stylized and was thus not similar to COSABELLA. Kokaraev also claimed that she had achieved a large volume of sales in Israel, whereas Luemme’s mark was virtually unknown locally, and argued that goodwill abroad was irrelevant for the purposes of registration in Israel. DECISION The Registrar concluded that the marks were confusingly similar from a phonetic and visual point of view, and that the marks covered goods of the same description. Thus proceedings under Section 29 of the ordinance (rival applications for identical or confusingly similar marks) were appropriate. However, the registrar dismissed Luemme’s argument that the Cosabella mark was well known in Israel since it was in use in one store only. Due to the earlier registration by Luemme, but the acronym issue to Kokaraev, since the mark was not well known locally, the registrar concluded that both applicants used the marks in good faith. However, in obiter, the registrar held that had one of the rival marks been well known, the fact that the later mark was based on the applicant’s name would not have availed. COMMENT The registrar attempts to distinguish the present case from the earlier case of Yekutieli v Virgin Enterprises where the mark “Virgin Candles” for candles made from olive oil was disallowed. I think that in that case, a good argument could be made that the term Virgin is descriptive and appropriate for candles. The more recent Galilee Mountain Vintage (boutique winery) vs. Galilee Vintage (established spirits manufacturer) is probably of more relevance.