Aro

April 20, 2014

Tijuana 96 SL filed Israel trademark application number 235921 for Aro. Ara AG filed an Opposition Proceeding, and Tijuana abandoned the mark. Ara requested real costs of 3,245.6 Euros and provided affidavits and other evidence to support this amount. In light of the relatively little amount of work in the file, Ms Shoshani Caspi considered this too much and awarded 2000 Shekels costs.


April 20, 2014

Machsanei Electric

Bet Electric Elite Mehandesim LTD applied for the above trademark no. 232670 covering wholesale and retail of electric, electronic, communication home appliances and computers; all included in class 35.

Electra Consumer Goods (1951) LTD opposed the mark. Their behavior was not found to be equitable, and ruled 2000 Shekels costs against them, and Ms Shoshani Caspi gave opposer 14 days to file a statement in response to applicant’s statement.

Since Electra Consumer Goods (1951) LTD failed to respond, so Ms Shoshani Caspi allowed the mark to be registered, but noted that opposer could file cancellation proceedings.


April 20, 2014

no flats

Housing crisis? A call for stiletto heels? The end of punctures? Read on to find out! On 27 May 2013, Yaara Shoshani Caspi suspended the cancelation proceedings concerning Israel Trademark No. 235764 “No Flats”, pending decisions in Magistrate Court hearing T.A. 1269-05-13 and Appeal to Supreme Court No. 3011/12 of District Court Ruling 1854-02-11 by judge A Yaakov. On 24 January 2014 the Supreme Court referred the case back to the District Court, authorizing it to rule on the rights and reputation of the parties in the mark as part of the Company Disbanding Case  23707-04-10. Ms Shoshani Caspi of the Israel Patent Office noted that the issues before her regarding the scope of the mark were identical to those before the court. Neither side informed the court regarding costs incurred in the case before the magistrate’s court. The Mark owner petitioned the court to throw out the case due to a lack of response, despite the fact that there was a response, albeit a late one, before Ms Shoshani Caspi. In light of the circumstances, Ms Caspi ruled that the ongoing case should remain suspended pending rulings in the remaining courts. The mark covers oil industrial, lubricating oil, Dust absorbing compounds, Wetling compounds, Interconnecting compounds, Fuel materials as well as Gasoline engines and lighting, candles and Lighting kerosene stoves. All included in class 4. The Applicant, Adhestick, is a neighbor of mine in Rosh haAyin.


Clip Fresh and Click & Fresh – Confusingly Similar or Not?

April 7, 2014

Farm Chalk Investment LTD filed Israel trademark application no. 234114 for “Clip Fresh by Farm Chalk” on 7 December 2010. The stylized mark is for vessels and container for food storage, from glass, porcelain and pottery in class 21.

Clip fresh

The mark is shown above.

On 7 December 2011 the mark was allowed and it published for opposition purposes in the patent office journal of 29 December 2011. On 29 March 2012, Millennium Marketing Intertrade LTD filed a notice of opposition, and the applicant submitted counter claims on 17 May 2012. Both sides submitted evidence, some of which was cancelled in a minor skirmish, and on 19 June 2013, a hearing was held after which both sides submitted more claims and counter claims and their summing up statements were submitted on 5 December 2013.

The opposer has a registered Israel trademark no. 204165 for a  stylized  logo Click & Fresh as shown below.

click and fresh

The Opposer has been importing quality household items for about 12 years and claims that their click & fresh logo is well-known. When comparing the sight and sound of the two marks, they are confusingly similar and likely to confuse the public since the words ‘clip’ and ‘click’ start with the same sound and the rest of the mark ‘fresh’ is identical. Furthermore, both marks embody the same message of closing to keep produce fresh. The opposer opposed the mark under Sections 11(6), 11(9) and 11(13) of the trademark ordinance.

The applicant responded that they have been using the requested mark since 2011, had a reputation in the container field and had invested in publicizing the mark, including via their website www.clip-fresh.co.il, and thus had no need to free ride on anyone elses reputation. Furthermore, not only are click and clip different, but there is an ampersand & in the mark and this and makes the marks both look and sound different.

Finally, the applicant noted that the opposer had no exclusive rights to the word fresh or click., and had disclaimed rights to these words in the process of registering the mark.

Both sides prevented their evidence.

In the ruling, the Commissioner, Asa Kling, noted that the grounds for the opposition was likelihood of confusion with a previously registered mark, and the legal question was whether the marks are confusingly similar to the extent that the public could purchase goods from one source, believing it to be from the other.

The test to be applied is the triple test, where the main feature is the sight and sound of the mark. Since the products are acquired off-the-shelf, the appearance of the mark was given more weight than its sound. Because of the ellipse, the ampersand and the additional word farm chalk, the likelihood of confusion was not seen as being too great, despite the similar customers being target.

Since there were a large number of similar marks being used by third parties, including “keep it fresh-click” ,”Click plastic design”, “Food container with quick click”, “Lock & Fresh” ,”Keep fresh food containers” and the like, Millennium Marketing Intertrade LTD’s earlier Click Fresh mark was considered insufficiently distinct in and of itself to prevent similar marks from registering. Since the applicant’s mark included the branding Farm Chalk, the allegations of free riding and passing off were rejected.

In conclusion, the mark was not considered sufficiently confusingly similar to opposer’s mark to prevent its registration, and the mark was allowed to register.


Should Israel Patent Office Hear a Trademark Cancellation Proceedings Where there is an Infringement Case before the Courts?

April 6, 2014

cube in hand

In June last year, I reported on a decision to allow the shape of the Rubik’s Cube to be filed as a trademark. See here  the mark is Israel Trademark No. IL 228232.

A request to have the mark canceled was filed by Dan S. LTD, To Buy Market LTD and Lula Pozalov.

Since there are pending cases regarding trademark infringement before the District Court, which were filed prior to the cancellation proceedings being initiated, there is a question whether the patent office should hear the cancellation proceeding, or should suspend it, pending the outcome of the case in the District Court.

The request to cancel was filed on 22 October 2013, after Civil Proceedings No. 61560—05-13 was filed in the Central District Court. In the District Court, one of the charges was trademark infringement and one of the defenses offered was that the mark should not have been registered. There is thus duplication of the case in two forums.

Ruling

The Commissioner of Patents, Assa Kling ruled that in  8/78 El Okvi vs. Israel Land Administration, P.D. 29 (2) 477 the Supreme Court ruled that where substantially the same question is addressed in two separate proceedings, despite slight differences in the parties and in the style of the complaint, it may be unfair for the defendant to have to address the same issue twice. The question to be addressed is whether hearing the same case in two forums is a fair use of the court’s time. The court case in the District Court covers the validity of the trademark, trademark infringement and additional issues such as passing off and unjust enrichment. The District Court can and will rule on the validity of the mark and so it makes sense for the Patent Office to refrain from doing so, both to avoid double work and to avoid the embarrassing event of the two forums coming to different outcomes.

In the circumstances, the cancellation proceedings in the Patent Office are stayed pending the court decision.

Comment

The decision makes sense. I think it is good that Israel doesn’t have a bifurcated system like in Germany, and that a legitimate defence against infringement can be that the mark or patent should never have registered. In this case I don’t think the mark should have been granted, and hope the court throws it out. That as may be, it certainly makes sense for the Patent Office to await the court’s decision.


Striking Evidence in a Trademark Opposition

April 6, 2014

Al Shurkah Alwataneya Lisenael Al-Alamenyom Walfrofilat – otherwise known as the National Aluminium & Profile Co. or NAPCO, filed Israel trademark No. 240139 for aluminium profiles. On it publishing for opposition purposes, Exstel filed an opposition. The mark in question is a simple line in a profile extrusion, whether an indentation or a protrusion.

NAPCO’s mark is shown here.

Al shurkah indentation

Exstel uses such indentations/protrusions at an angle of 120, and claims that their mark is very well known. The Exstel mark is reproduced below.

Exstel's mark

Unfortunately, Exstel’s mark had not been renewed and had thus lapsed, allegedly due to a clerical error.

Marking extrusions with one or more parallel indentations or protrusions is the only practical way to mark them. The  single 120 indentation does seem to be rather similar.

Since the Exstel had been allowed to lapse, they have to claim that their mark is well known. It may be well known among building contractors, but it certainly is less well known than, say, the Adidas three striped mark.

Applicant argued that the Opponent was using the protruding mark, and not the indented mark. Both sides supplied evidence including various statements.

Applicant has requested that various statements should be deleted since they were submitted as responses to applicant’s statement but are, in fact, new evidence.

One such statement is that Exstel has been using both protrusions and indentations for years. Another related to the likelihood of confusion when purchasing profiles from a store that stocks both NAPCO and Exstel is NAPCO continued to mark their profiles with V indentations.

A third piece of evidence relates to a recording of a conversation with a stockist, that NAPCO wanted dismissed on grounds of it being heresay,  also on grounds that the private investigators did not present this evidence which was slipped in as an appendix, and thus could not be cross-examined.

Opposer argued that all these statements relate to the issue of the mark being new and distinctive.

Finally, the file wrappers concerning the 240081 and 240082 marks to Sharmer were submitted as evidence only at the stage of responding to the  applicant’s evidence, since they were unavailable earlier. (For details of these marks see here).

As far as the Affidavit’s went, the Deputy Commissioner accepted that a protrusion was better than an indentation since indentations created a point of weakness. The Deputy Commissioner was prepared to delete a statement in an expert opinion that a single store might carry profiles from more than one source, since this was beyond his expertise. Since the private investigators had been available for cross-examination, the Deputy Commissioner did not see reason to strike this evidence.

Ms Bracha could not see any reason to cancel the submission of the file wrappers of 240081 and 240082 marks to Sharmer. However, she didn’t think they provided much support to either side, and clearly the opposer could not be cross-examined on the accuracy of their content.

In summary, Ms Bracha struck the statement of Mr Sagi Sgian from the record and ordered 1000 shekels be paid to the applicant

COMMENT

There is always a conflict over whether to favour procedure or substance. The issue here should be whether or not the relevant public, i. e. builders and glazers, would be confused. I think that this is more significant than whether data is submitted in a timely fashion. Having allowed their mark to lapse certainly doesn’t help the opposer. If they do, however, widley use the same mark, i.e. an indentation, then there is a likelihood of confusion. If, for reasons of weakening profile, or other reasons, they only use protrusion, there is probably no likelihood of confusion.


Opposition to Israel trademark No. 238704 Lapidor – לפידאור

April 3, 2014

hanukia   lapidor   ptilor

Lapidor means “torch light” – torch as in a hand held flaming article, not an electronic pocket torch.

Polack Steinberg LTC filed Israel trademark application number 238704 for Lapidor for illumination equipment and accessories in Class 11 on 21 June 2011, and the mark was accepted and published for opposition purposes on 30 April 2012.

On 30 July 2012, Shalhevet Mifal l’Yitzur Nerot LTD (literally Flame Factory for Manufacturing Candles LTD) opposed the mark.

Opposer’s Claims

The Opposer manufacturers oil lamps and religious paraphernalia from various raw materials including plastic, glass and various metals. They have a registered trademark number 231561 for “Ptilor – פתילאור” literally, “light wick”. They also have a registered design for a glass oil lamp, and they claim to have exerted a lot of effort in designing an oil lamp that is easy to install and use, and where the consumerables may be safely replaced.

Originally, Opposer claimed that their mark was well-known in Israel and abroad, but this claim was later dropped.

Opposer alleged that applicant was selling his products as Ptilor – lapidor, and the New Ptilor – Lapidor. On discovering this, the Opposer filed a court proceedings in the District Court (3864-11-11) claiming passing off and unjust enrichment, resulting in a ruling against the applicant using Opposer’s marks.

Finally, Opposer argued that the applicant’s marks are confusingly similar and in the same class, and thus contravene sections 11(6) and 11(9) of the trademark ordinance.

Applicant’s Claims

Applicant manufactures oil lamps in the form of a torch which is packages in a package that converts into a Hanukkah lamp. The mark was chosen due to the shape of the lamp.

Applicant also has registered designs for the box (51251) and for the individual lamps (51252). Applicant claims to have its own reputation and client base and does not need to ride on Opposer’s reputation.

Applicant claims that the advertising campaign was without their knowledge and consent. Finally, the term “or” means light and no one company deserves a monopoly on this generic, descriptive word.

Both sides provides affidavits and supporting evidence and were cross examined on 9 December 2013.

The Ruling

The District Court only enjoined the defendants from using the word Ptilor and not from the word Lapidor (or from the suffix Or).

With regards to the claim that the marks were confusingly similar, the Deputy Commissioner applied the Triple Test. With regard to the appearance & sound of the mark, she ruled that the mark has to be considered in its entirety, and the little weight given to the suffix –or meaning light. Although the clients and distribution channels are similar, with no indication of inequitable behavior in choice of mark and with the marks looking and sounding different, the similarity in clients and distribution channels could not in and of itself create a likelihood of confusion.

The Deputy Commissioner argued that the claim that Lapidor was using the term Ptilor in comparative advertising is problematic since the word was associated with the product and arguably became generic and recognized as the product, i.e. a glass container of olive oil with a wick that made lighting Shabbat and Hanukkah candles with olive oil less fiddly. In other words, the Opposer’s mark is problematic, not the Applicant’s!

The charges of passing off and inequitable behavior was not proven and the Deputy Commissioner did not consider it necessary to address the other claims regarding Unfair Competion.

Conclusion

The opposition was rejected and the Opposer was ordered to pay 1500 Shekels costs and 17,000 Shekels in legal fees.

Israel Patent Office Ruling Concerning Israel trademark application number 238704 “Lapidor”, Jacqueline Bracha, 27 March 2014. 

COMMENT

The issue here is competition, pure and simple. Whatever applicant did or didn’t authorize regarding combining the marks, the term ‘or’ means light and Lapidor and Ptilor are not confusingly similar.

Marketing a similar product to one successful on the market is legitimate so long as the packaging is dissimilar, the branding is dissimilar, where a design is registered, (or under A.Sh.I.R. also unregistered designs), so long as the design appears different. That is the case here.

There was a case some years back where a Turkish company making paint called Dewilux had their mark canceled by ICI, owners of Dulux. The term lux means light, but not many people know that. The Turks mark was confusingly similar. The two marks in this case simply aren’t. Whether either name is particularly distinctive is another issue.\

 


Chic Design

April 3, 2014

chic design
Chic Design Industries LTD filed Israel Trademark Application Number 223957 as shown above, for vending, distributing, importing and exporting furniture and for managing furniture showrooms in Class 35.

The application was submitted on 1 October 2009 and allowed on 9 January 2011, and published for opposition purposes on 31 January 2011. On 14 April 2011, Mr David Azriel filed an opposition, and subsequently the applicant filed a second mark in Class 20 for furniture including sofas, lounge suits, tables, chairs, sideboards, beds and mattresses. The mark was filed on 19 May 2011.

The opposer has a couple of long standing marks filed in 2004 for furniture and domestic ornaments, textiles, carpets, rugs and clothing in section 35.

The marks are shown below.

chic design 2

Opposer’s claims

The opposer claims to have used the marks for 17 years, to have invested in marketing and to have built up a reputation. The opposer claimed that the attempted registration is inequitable behavior, confuses the public and is unfair competition. Since the mark is similar to his earlier marks, it is ineligible for registration.

The Hebrew word עיצובים means designs, and so the word design דיזיין is not distinctive.

Applicant’s claims

The applicant claims to have used his logo since 2002, and to have invested some 100,000 Shekels a year in marketing. He claims to have sales of 12 million shekels a year, to be one of the leading three furniture distributors in Israel and to have developed a reputation.

Applicant claims to be a leading manufacturer of leather furniture, whereas the opposer is an importer of smaller household goods. He further argued that the client base was different. Applicant expressed surprise that opposer was opposing the furniture showrooms but not the mark for selling goods through other outlets.

The applicant argued that opposer had had to disclaim the word Chic to register his mark in the first place, and didn’t have rights in this generic term. Since the marks look and sound different, there was no reason to not allow his mark to be registered. Since he’d acted in good faith, the commissioner could allow coexistence. Applicant further accused opposer of inequitable behavior for waiting three years before commencing proceedings.

Both sides provided affidavits and documentary evidence to support their claims.

The ruling

Since the Opposer dropped charges of confusing public and unfair competition, the patent office ruled on the narrow question of registration in light of confusing similarities.

Under section 11(9), a mark that is identical or confusingly similar to one registered may not be registered. The purpose of the law is to protect the public from confusion and to protect the rights of a party whose mark is already registered.

Applying the triple test, Ms Bracha ruled that although the word ‘design’ is the English equivalent of ‘itzuvim’, the marks nevertheless sound different and look different, even though the word Chic is common to both. She went on to rule that the marks were not confusingly similar.

The goods are dissimilar, in that the applicant sells leather suites and the opposer sells carved legs and the like to carpenters and home designers, rather than full suites of furniture. The deputy commissioner went on to rule that the clients and distribution channels were different.

As to other considerations, Ms Bracha did not think that the public would be confused in that purchasers of leather suites would not think that there was a connection to the opposers mark. Both parties had coexisted for other a decade without any clients being confused, and it was only when one party discovered the other in the yellow pages, that he was aware of him. Similarly, the second company only learned of the first on receiving a Cease & Desist letter.

The Deputy Commissioner noted that the opposer had argued that the applicants marks were widely registered across the class, but only more narrowly used. She ruled that oposer could challenge the scope of the mark in cancellation proceedings at a later date.

In conclusion, the opposition was refused and Opposer was ordered to pay 15000 Shekels in costs.


Ice Line LTD. vs. Ice Shot LTD. – competing marks

April 3, 2014

ice-shot  ice shot 2

If a second, trademark application is filed whilst a first similar mark is pending, the patent office initiates a competing marks procedure under section 29 of the Trademark Ordinance 1972.  One mark is chosen to proceed to examination, and only once it is allowed or rejected, is the other mark examined. When choosing which mark to proceed with, the first mark filed is a consideration, but the patent office also considers the scope of use of the marks by the two applicants, and also whether there is evidence of inequitable behavior.

In this case, a Mr Joash Hassidim filed Israel trademark application no. 250709 on 30 October 2012 for a stylized mark containing the words Ice Shot, for alcoholic drinks in class 33. On 7 February 2013, Ice Shot LTD. filed Israel trademark application no. 253348 for a different stylized mark containing the words Ice Shot, again for alcoholic drinks, excluding beer in class 33. 

The sides were given until 30 November 2013 to submit evidence, but the second applicant, Ice Shot LTD. missed this deadline and only evidence on 5 December 2013 without asking for or being granted an extension. In an interim ruling on 9 December 2013, the Deputy Commissioner, Ms Bracha, ruled that the evidence would not be considered 

On 12 February 2014, Mr Hassidim was cross-examined on his statement. Mr Hassidim claimed that he and his partners conceived the mark in 2009 or 2010 and in 2011 engaged a graphic designer to create the logo and packaging. The mark is being used in connection with a fruit flavored alcohol that is intended for freezing (presumably intention is to be sold from a freezer, at or below 0°C, the alcoholic beverage will not be frozen). The product was launched in Elat and from 2012 onwards, has been sold across the country.

Hassidim claimed that he first learned of the use by Ice Shot in 2013. He summed up noting that the he was the first to file, his product is available in over 1000 outlets and at various events and hotels, and that since the competing marks evidence was not accepted, they really had no claims at all. He also provided various publicity material from local newspapers, the internet and Facebook showing usage of the mark.

Ice-Shot LTD. made various counter-claims re usage of mark from 2012, but since their evidence was not accepted, they couldn’t substantiate their claims. Ice-Shot tried to argue that Hassidim’s usage was only in Elat and mostly on off-shore cruises and could not fairly be considered usage in Israel. They claimed to have continuous registration of the web domain www.iceshot.co.il, which the first applicant should have known about, and that the earlier filing by first applicant was only an insignificant three months earlier.

In conclusion, since none of the evidence of Ice-Shot LTD was accepted, the equitable behavior of the first applicant could not be challenged. Arguably the second applicant filed only on learning about the first applicant’s filing. That as may be, Israel trademark application no. 250709 to Hassidim (Ice Line LTD) issued, and the later filed Israel trademark application no. 253348 was canceled. Costs of 7000 Shekels + VAT + expenses of 700 shekels (a total of about $2200) were awarded to Hassidim.

Decision re Ice Line LTD. vs. Ice Shot LTD., Ms Jaqueline Bracha, 12 Feb 2014

COMMENTS

The moral of the story is to file one’s evidence in time.


RETINA trademark registered by APPLE INC. in same class as identical mark to KODAK

April 3, 2014

RETINA

APPLE Inc. filed Israel trade mark No. 235988 for the word RETINA. The goods covered by the mark included: Computers; computer display screens; handheld mobile digital electronic devices used as a telephone, handheld computer, personal digital assistant, electronic personal organizer, and electronic notepad computer; handheld mobile digital electronic devices used to access the Internet, electronic mail, digital audio and video, and other digital data – all in class 9. 

Since KODAK had an earlier Israel trade mark No 12555 RETINA, from 1953 in class 9 for photographic cameras the mark was refused under Section 9(11) of the trademark regulations. 

Applicant submitted a coexistence agreement from KODAK, but the Examiner felt this was insufficient, and the applicant requested an oral hearing in which Applicant argued that APPLE uses the mark on screens, whereas KODAK used the mark on lenses for mechanical cameras. APPLE argued that their target audience was general, whereas KODAK’s products were aimed at professional photographers. Furthermore, the mark was successfully registered in a number of jurisdictions around the world including the UK, Switzerland and New Zealand. Since the applicant uses the logo RETINA together with the iconic Apple logo, there is no real likelihood of confusion. 

In her ruling, Deputy Commissioner Jacqueline Bracha noted that the triple test (similarity of marks, similarity of goods, customers and any other reasons), was all well and good for similar but non-identical marks. However, where the mark is identical, the test should be applied very stringently. Citing Seligsohn and the visa decision she noted that if the mark is identical, one has to be very careful about allowing co-existence. Nevertheless, the goods so marked are different. She noted that despite both being related to photography, the goods neither compete nor have a symbiotic relationship, where one complements the other. 

The retail outlets are also different. Although the general public purchasing Apple products includes professional photographers, since professional photographers are specialists it is unlikely that they would be confused regarding the origin of the different products. 

Despite the coexistence agreement between the parties not being the be all and end all in such matters, this also supports the contention that there is no likelihood of confusion. 

Ms Bracha also noted that the word Retina has a meaning which lowers the likelihood of association exclusively with one producer or another. She acknowledged that the mark was used together with the Apple logo, but since it was submitted on its own, and, if allowed, could be used on its own, this was given little weight. Nevertheless, on weighting everything up, she concluded that the mark could be registered. 

Decision re Israel trade mark No. 235988for the word RETINA, Ms Jaqueline Bracha, 6 March 2014.  

COMMENT

The decision is well-reasoned. Judge Ginat’s ruling on SoHo, three days later also supports it. The problem may come about if and when KODAK or APPLE branch out into new areas. Apple Records and Apple Inc. lived in happy coexistence until the MP media players.

What I believe Ms Bracha could and should have done is to limit the scope of goods in both registered marks to define the KODAK mark as for camera accessories, lenses, etc. for the professional photographer, and Apple’s mark for consumer goods comprising largely of an LCD screen.

Some years ago I registered a trademark for the boutique winery Tanya, whilst there was a Polish vodka called Tania on the Israel market. We filed a coexistence agreement with from the Polish company, and at their request, marked our goods for wines and not vodka. This avoids future conflict.

 

 

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