The IP Factor

In Ratfon Import Ltd v ITT Manufacturing Enterprises Inc (March 23 2009), Noah Shalev Shmulovich, the deputy commissioner of patents, trademarks and designs has held that alleged usage of a mark by apparently unauthorized and unidentified, unquantified third parties can be considered as evidence that the mark was not abandoned because it still enjoyed a reputation in Israel. The mark holder, ITT Manufacturing Enterprises Inc (IMEI) is a German company that manufactures electronic and industrial products. IMEI holds a number of related trademarks: INTERNATIONAL TELEPHONE & TELEGRAPH and logos ITT and ITT EXTRA for various electric consumer products in Classes 7 and 9 of the Nice Classification. In 1998 Ratfon Import Ltd, an Israeli company specializing in the importation of electronic goods, applied for the registration of the trademarks ITT (and design) and ITT INTERNATIONAL (and design) for various electric consumers goods in Classes 7, 9 and 11. IMEI opposed the registration based on their registered marks. In response, Ratfon petitioned for cancellation of IMEI’s marks on non-use grounds. The Israel Trademarks Ordinance provides that a registered mark not in use for three years or more following registration may be subject to cancellation. According to Ratfon, IMEI sold its rights in the ITT marks in Classes 7 and 9 to ITT Sheraton in 1995 and reacquired them in 1999. During the period between 1995 and 1999, IMEI did not make use of the ITT marks with respect to the goods for which they were registered. Furthermore, apparently, ITT Sheraton had also failed to use the marks during that period. IMEI claimed that by reacquiring the ITT marks they had ‘revived’ them and that the marks still had a reputation. generally, public interest will prevail over the ownership rights of a trademark owner. Therefore, even where a trademark owner has seemingly lost its ownership rights to a mark, a third party will be prevented from acquiring rights if consumers still recognize the mark as belonging to the original owner. In this instance, the deputy commissioner ruled that the trademark ITT was a well-known mark and that Israeli consumers still recognized it as connected to IMEI. The deputy commissioner further found that since the ITT marks were also in use by unauthorized third parties (not otherwise identified in the decision), the marks were never abandoned in relation to the goods for which they were registered. this third party usage indicated continuing reputation of the mark and served to refute any claim of abandonment. Shmulovich concluded that when IMEI reacquired the marks from ITT Sheraton they were revived with respect to both the private and public interest. Accordingly, he ordered the applications filed by Ratfon be rejected and dismissed Ratfon’s petition for the cancellation of IMEI’s marks. This decision emphasizes the strangeness of recent Car Glass decision: Ilan Car Glaziery Ltd v Carglass Luxemburg Sarl (December 3 2008) See http://blog.ipfactor.co.il/2009/02/01/israel-registrar-of-trademarks-cancels-car-glass-marks-on-grounds-of-non-use/ where non-registered authorized rights were held by the registrar, Dr. Noam, as insufficient to maintain a registration. In the recent Apollo decision, http://blog.ipfactor.co.il/2009/03/14/spaced-out-trademark-decision-for-apollo/to dilute non-registered common law rights were effectively recognized, despite statements to the contrary. I sense a strong lack of consistency in the decisions of the Israel Patent and Trademark Office, and hope that one of the parties appeals to the Supreme Court as we really need clear guidelines.