Visa Europe LTD. filed an Israel trademark application number 21685 for the word OMNI. The mark was for bank cards, chargeable cards, debit cards, banking software for authorizing, clarifying and regulating business dealings, all in class 9.
When the Trademark Office noted that Verifone has an identical mark no. 93536 for the word OMNI for electronic payments by bank cards, the applicant noted that the omni was a Latin prefix meaning everywhere and amended his application to exclude allowing payments, and sent a waiver from Verifone, allowing coexistence.
The question addressed in this ruling was whether the public interest could allow the two firms to use the identical mark for related and complementary products.
Ms Jaqueline Bracha cited the relevant case law and came to the conclusion that the identical mark for related goods could be allowed to coexist if the customers were different.
Verifone makes portable card readers for vendors. Visa Europe provides cards to customers. Since the two firms were happy to coexist, she saw no reason to refuse Visa Europe’s application.
I disagree with the applicant. The prefix omni means all or every and not everywhere. Everywhere is omnipresent, where the where bit is the suffix, i.e. the present or presence part.
More substantively, I’ve dealt with similar oppositions in a similar way, and managed to register Tanya for a client of mine making boutique wine, despite there having been an earlier trademark registered in the same class for Tania for vodka, by obtaining the vodka mark owner’s permission, changing the registration to wine and not vodka, and pointing out that there was little likelihood of confusion since vodka is transparent and wine isn’t. the bottles are different as well, since wine comes in corked bottles, and vodka in bottles with screw top lids. Nevertheless, we are dealing with financial services here which are a little more intangible. A drunken consumer would hardly be likely to confuse a bottle of wine for a bottle of vodka, but I can see someone purchasing credit card services assuming that their card or banking software was supplied by Verifone or card reader and transaction software was supplied by Visa Europe.
One also wonders if there are vendors who also have credit cards and make credit purchases. I suspect there are.
Finally, according to Ms Bracha, the word OMNI is a Latin prefix for everywhere, but even if it means every or all, it is a generally positive adjective so one wonders why she doesn’t consider it laudatory, in the same way as she considered the term Express laudatory in the previously reported decision, and therefore inadmissible for registration?