Razer (Asia Pacific) PTE LTD. is a Singapore based company that has filed a Madrid International trademark application no. 1097804, Israel TM No. 242735 for “Razer” in classes 9, 18 25 and 28
The mark covers Computers; laptop computers; notebook computers; handheld computers; personal digital assistants; computer and video game apparatus adapted for use with television receivers or other external display screens or monitors; computer displays; computer monitors; computer hardware; computer sound cards; computer peripherals; computer and video game controllers; computer mice; computer keyboards; computer keypads; computer graphics tablets; computer pens; computer joysticks; computer trackballs; flight yokes for computer and video games; steering wheels for computer and video games; accelerator pedals and brake pedals for computer and video games; guns for computer and video games; motion sensors for computer and video games; audio equipment and apparatus; earphones; headphones; microphones; headsets; loudspeakers; apparatus for cable management for the aforementioned goods; computer and video games; computer mice mats; bags, pouches, cases and covers adapted for holding and storing the aforementioned goods in class 9; Bags; messenger bags; sport bags; travel bags; backpacks; knapsacks in class 18; Clothing; polo shirts; T-shirts; sweatshirts; headgear; caps; sweatbands in class 25, and Games and playthings; electronic games and playthings other than those adapted for use with television receivers; video game apparatus other than those adapted for use with television receivers; handheld video game apparatus other than those adapted for use with television receivers; parts and spare parts of the aforementioned goods as far as included in this class; bags, pouches, cases and covers adapted for holding and storing the aforementioned goods in class 28. The mark was filed on 28 August 2011.
Before this could be examined, on 29 November 2011, Razor USA LLC filed Israel trademark no. 242450 for Razr in class 9 covering Computers, tablet computers, and related accessories, namely, computer docking stations, mounts, stands holders and cradles for holding and charging computers, carrying cases for computers, protective covers for computers, protective or decorative skins, screen protectors, namely, fitted or plastic films known as skins for covering and protecting computers, input and navigation devices, namely, keyboards, mouse, track balls, and stylus for use with computers, computer memory, namely hard drives, portable and removable memory for use with computers, networking equipment, namely modems, routers and gateways for use with computers, batteries, power adaptors, computer cables, cable connectors, remote controls, headsets, speakers, sound systems for use with computers, and microphones and web cameras for use with computers and computer software; telephones; corded and cordless telephones for wireline service (PTT (post, telegraph and telephone) POTS or PSTN service); mobile phones, smartphones, and accessories therefore, namely battery chargers and power adaptors; all included in class 9. .
Because of the similarities between the copending marks a competing marks proceedings was instituted.
In such proceedings, the first-to-file is only one consideration. The extent of use of the mark and indications of inequitable behaviour are also considered.
After evidence was submitted and before a hearing was held, Razer (Asia Pacific) PTE LTD. submitted additional evidence showing sales during the years 2006 to 2010, and also Google searches for the term RAZER. The additional evidence was submitted under Section 41 of the Trademark Ordinance and under Circular M.O. 55. Razer claimed that the peculiar nature of competing mark procedures and the importance of the supplementary evidence justified its submission. They also argued that the affidavits of both parties related to these statistics, so their submission was by way of clarification rather than widening the range of issues under debate. Razor USA LLC did not challenge the relevance of this supplementary material, but did consider it should be inadmissible at this stage of the proceedings.
The Commissioner noted that the competing marks procedure is adversarial by nature, but there are no clear binding procedures. He considered that to not allow additional evidence to be submitted which could help clarify which side should prevail, it would be necessary to show that doing so would be particularly burdensome or could create an unfair advantage. Section 41 of the trademark ordinance authorized the Commissioner to request additional information at his discretion. Whilst the general civil procedure may be applied, this should only be done to the extent that it doesn’t interfere with a fair result being reached.
The sales information is considered germane to the issue of which side should prevail. Razer had related to sales and provided details of sales in 2011 and 2013, and the additional evidence simply details sales at an earlier date. The Google search results are less fundamental and require more explanation as to their relevance. Although these may indicate the respective usage of the parties, there was no explanation why they weren’t submitted earlier. Consequently, the sales information was accepted as additional evidence but the Google search data was not. Razor USA was provided a ten-day window to submit their sales data and costs of 8000 Shekels were awarded to Razor US for having to fight this additional submission.
Decision re Competing Israel Trademarks No. 242735 and 242450, by Commissioner Asa Kling, 14 December 2015