Home 4 U

November 5, 2015

Israel Trademark Application Number 238757 was filed by Itzik Peretz for the following image:

Home 4 U

The Hebrew words mean (Mediation and Consulting for Real Estate).

The Application was filed on 27 June 2011 and after allowance, it published for Opposition purposes and an opposition was filed by Oded Lifshitz on 21 October 2012. A hearing was held on 23 March 2012 where both sides were invited to summarize their positions.


Itzik Peretz has an estate agent (realtor) business that has operated in the Netanya region since 2007. The firm operates under the name Home 4 U.

Oded Lifshitz ha operated in the same business since 1999. In January 2005 he filed Israel trademark application No. 177762 for HOME4U which was registered.

In 2008 Peretz looked for a website address for his business, and, on discovering that the home4u.co.il domain was not available, he registered Home4u.org.il.

In May 2011, Lifshitz sent Peretz a Cease & Desist letter and Peretz changed his website address to Home-4-u.org.il believing this to be sufficiently different to keep Mr Lifshitz happy. Mr Lifshitz was not satisfied with this and filed a suit in the Small Claims Court of Tel Aviv – Jaffa, claiming inter alia, trademark infringement.

The Court acknowledged trademark infringement, but due to a lack of evidence, did not award damages and threw out the case.

The Opposer’s Position

Lifshitz claimed that his earlier word mark home4u was sufficient grounds for the Examiner to have refused Peretz’ application.

Lifshitz supported his case with a declaration from himself and further statements from two other realtors who claimed to know him for several years. He argued that the proposed mark was confusingly similar to his registered trademark and to his store sign and it was totally irrelevant that Peretz had registered his company as Home 4 U Mediation and Consulting for Real Estate LTD.

Applicant’s Position

The Applicant Peretz denied knowing the Opposer or his business prior to the case being filed against him in the Small Claims Court. Then he discovered that Lifshitz had a real estate business in the Tel Aviv region that was registered as Better Location LTD, a Place for My Home, and that Lifshitz had registered the www.home4u.co.il domain.

Peretz does not consider the his trademark application is confusingly similar to Lifshitz’ mark, and does not consider that Lifshitz is actually using his trademark. Furthermore, Peretz does not consider his application in any way similar to Lifshitz’ business name.

Peretz considers that since the Small Claims Court did not award any sanctions against him, Lifshitz is estopelled from claiming infringement of his trademark. Peretz considers the term home4u has become generic over the years and lacks distinctiveness. However, as a fall back position, he is willing to add the word in the Sharon which denotes the Sharon region around Netanya.


The Adjudicator of Patents and Trademarks, Ms Yaara Shoshani Caspi considers that the relevant grounds for opposition are sections 11(6) and 11(9) of the Trademark Ordinance 1972.

11. The following marks are not capable of registration:

(6)  a mark likely to deceive the public, a mark which contains a false indication of origin, and a mark which encourages unfair trade competition;

(9) a mark identical with one belonging to a different proprietor which is already on the register in respect of the same goods or description of goods, or so nearly resembling such a mark as to be calculated to deceive;

Section 11(9) provides protection to a trademark owner from identical or similar marks being registered where there is a likelihood of confusion regarding the source of goods or services provided under the mark. Since the marks are not identical but are similar, it is necessary to consider the likelihood of confusion for goods or services covered by the marks.

Ms Shoshani Caspi then went on to apply the triple test as detailed in Pro-Pro Biscuits this Promein and in Bank Igud vs. Bank Agudat Israel, rejecting allegations that Lifshitz’ mark should be invalidated as being irrelevant to the Opposition Proceeding.

Section 11(9) was relevant as the services covered by the two marks is the same.

Sight and Sound

As to the sound of the mark, Ms Shoshani Caspi noted that one had to compare the marks as a whole, whilst noting that customers have imperfect memories.

Since the other words of the mark and the red roofed house graphic are generic-descriptive, the only part of the mark that is distinctive is HOME 4 U. Support for this position was found in Applicant’s witness’ testimony who referred to ‘the name Home 4 U with the red house logo’ and then stated that “as to how customers related to the firm, I ask them which realtor send them and they answer home 4 u.

Consequently, Ms Shoshani Caspi considered the appearance and the sound of the dominant element of the pending mark as confusingly similar to the issued mark. She did not consider that having spaces between the ‘home’, the ‘4’ and the ‘u’ was significant.

Clientele and Marketing Channels

Although the two businesses operated in different towns, that did not prevent a likelihood of confusion as the clients were interested in purchasing property and one or other of the concerns could open a branch in a different town.

In previous rulings such as Great Shape and Aroma, it has been noted that Israel is a small country, which makes a confusion between businesses operating in specific locations likely. Furthermore, both companies make extensive use of the Internet. Again, the fact that the Opposer uses a different moniker, i.e. Better Location is irrelevant as whether or not the opposer’s mark is voidable is not relevant to the present opposition proceeding. More relevant is that many real estate listings don’t allow graphic representation and the Netanya business thus advertises itself by name.

Everything Else

The Adjudicator noted that Lifshitz had alleged inequitable behaviour on the part of Peretz in choosing his business name but did not consider this proven. On the other hand, she rejected the estoppel argument noting that only the Patent & Trademark Office had the authority to register marks. Even putting that aside, the failure of the small claims court to determine that there was no infringement of Lifshitz’ mark did not mean that Peretz’ mark was registerable as the legal questions were different.

Since the marks were confusingly similar and were directed to the same clientele and marketing channels,, without other issues being significant, the Opposition could be accepted making consideration of Section 11(11) redundant.

Unnecessarily, Ms Shoshani-Caspi went on to consider Section 11(6) anyway. Here she did not find the evidence conclusive.


Ms Shoshani-Caspi ruled that the Israel Trademark Application Number 23857 be canceled and awarded 9000 Shekels costs to the Opposer, Mr Lifshitz.

A decision to read over coffee

October 26, 2015

In February 2008 Alon Intrade LTD filed a number of coffee related trademark applications that issued between December 2008 and August 2009. The marks include Si Caffé as text in Hebrew and English and a stylized application, and Si Espresso as text in Hebrew and English and as a stylized application.

Si Cafe  Si Espresso
The class 30 registration was for cold and hot drinks including tea and coffee, cocoa, rice, tapioca, sago, ersatz coffee, flour, baking foods and cereal grain products particularly bread, cakes and baked goods, pizza and frozen pizza, flat cakes cooked cakes (pancakes?) and frozen cakes, sweets, confectionery for baking, honey, honey like syrup (molasses?) yeast, baking powder, salt, mustard, vinegar, spicy sauces, sauces, spices, and ice for drinks.

The class 43 registration were for food and drink vending services including the sale of sandwiches, salads, cakes, hot and cold meat and milk products, sale and serving of all types of coffee, hot , cold and alcoholic beverages, all in class 43.
In December 2013, S.A.M. Coffee services LTD requested the cancellation of the marks. , S.A.M. Coffee services LTD has the following mark: The marks owned by S.A.M. Coffee services LTD ‘s marks were filed in December 2001, in classes 30 and 42 for coffee, ersatz coffee, flour and grain based products and baked goods and for providing food and drink.

S.A.M. Coffee services LTD claimed that they run an established chain of coffee shops called Sicaffe that is known in Israel and abroad for its high quality products and service. The chain roasts the coffee beans and bakes bread in house and has proprietary blends of coffee beans.

This is S.A.M.’s mark.


S.A.M. Coffee services LTD claims that Alon Intrade LTD’s marks are confusingly similar to theirs, and that the word marks Si Café and Si Espresso lacked distinctiveness and create unfair competition and should therefore be canceled under Section 39a on the grounds that under sections 8(a), 11(6) and 11(9) they should never have been registered in the first place.

Furthermore, S.A.M. Coffee services LTD claim that they first learned about Alon Intrade LTD’s marks Si Café and Si Espresso when a consumer affairs program investigated Si Café and Si Espresso and concluded that they recycled their products to the customers, and that people wrongly attributed this behaviour to Sicaffe due to the similarity of the marks.

Sicaffe submitted an affidavit that supported their allegations nd that explained that the first Sicaffe shop opened in Ramat haChayal in 1998 and in 2011, a second shop opened in Tel Aviv. The chain opened two coffee shops in New York in 2003 and 2004 and two more in Russia in 2013.

Sicaffe further noted that Alon Intrade LTD used the two trademarks interchangeably. For example, in Netanya, workers in Si Caffé wore uniforms with Si Espresso printed on them, and the payment receipts used Si Espresso as well. In Si Espresso the name Si Caffé appears on the cups, sertviettes and take-away bags.

Alon Intrade LTD responded that they had set up a chain called Sigafreido Espresso Bar that, over the course of time was shortened to either Si Caffé or Si Espresso, depending on the character of the individual coffee shop.

The chain(s) include 16 shops along Route 6 and at Ben Gurion Airport and serve thousands of customers each year. The annual turnover is millions of Shekels and there was never a confusion with the Opposer’s chain. Furthermore, the marks were examined and allowed despite Sicaffe’s earlier registrations. Since Sicaffe had not objected over four years, they were estoppeled from so doing.

Alon Intrade LTD also argued that there was no likelihood of confusion between the marks which all comprised common words that no one was entitled to own. Furthermore, they had disclaimed rights in the elements of the marks.
Alon Intrade LTD explained that the Si Caffé and Si Espresso marks were the result of a rebranding in 2008 and that the marks have been in continuous use since then.

The Si Caffé mark is used in restaurants that offer a culinary menu that is a fusion of the Israeli and Italian kitchens, whereas the Si Espresso mark is used for self-service cafeterias. The outlets also use the non-registered mark ‘Si Express’ for the new Grab & Go concept.

Due to the location of the coffee shops and the cooperation between the chain and their customer club the registered marks are seen by 1.5 million customers a year. In addition the company invests millions of shekels in marketing and promoting the chain via advertising and managing the customer club, relationships with other customer clubs, works organizations in different sectors and the like. Because of cooperation with the popular navigation program WAYZ, drivers are alerted when they are near branches of the chain.

The witnesses were cross-examined on their statements on 12 January 2015.


Section 39 of the Trademark Ordinance defines a 5 year period beyond when a mark is registered during which a mark that should not have registered due to one of the provisions of sections 7 to 11 can be canceled.

There is no argument that the cancellation procedure was initiated within this period, however the mark owner claims that the Applicant for cancellation is estopelled from so doing. This, is, however, not the case. Failure to oppose a mark does not deprive third parties from initiating cancellation procedures. The claim has no legal support and is also unreasonable. Not all players follow the trademark register avidly and so there are provisions for correcting the register, including cancellation of marks. Indeed, as is clear from the Versace case even unsuccessfully opposing a mark does not prevent the opposer from later initiating and winning cancellation proceedings – See here, here and here.

As the Ordinance itself gives 5 years from issuance for a mark to be cancelled for the grounds in Sections 7 to 11, there is no room to claim that a four year delay is covered by a statute of limitations. The defense of tardiness is inadequate. It would however be reasonable to rely on a specific surrendering of the right to challenge. In general, cancellation proceedings and oppositions by third parties are a way of ensuring the integrity of the trademark register, including uncovering and correcting mistakes made by the Israel Patent and Trademark Office. The cancellation procedure does not only serve the competitor who initiates it, but also serves the public good. The costs involved and the burden of proof are sufficient to limit third parties from filing frivolous cancelation proceedings.

In this regard, Ms Bracha refers to Kerly’s Law of Trade Marks and Trade Names”, 15th ed. (2011), p. 345 by James Mellor, David Llewelyn, Thomas Moody-Stuart, David Keeling, Iona Berkley which shows that UK and European law also have a similar five year period. She does, however note that a significant period of coexistence may indicate that consumers are aware of the subtle differences between similar brands. However the Applicant for cancelation’s statement of case concentrates on the similarity between marks which allegedly has resulted in consumer confusion and unfair competition.

Ms Bracha therefore applied the (five part) triple test and considered:

  • the appearance of the marks
  • the sound of the marks
  • the distribution channels
  • the customers
  • everything else of interest

and cited the relevant case law (pro-pro biscuits, Bak Igud vs. Bank Agudat Israel, HaMishpacha, Tam Teva and Ambrosia.

As to the appearance of the mark, the challenger’s mark is for Sicaffe with a white coffee bean within a black triangle. The challenged marks include graphic marks Si Café against a red background and Si espresso against a grey background and the word marks Si Caffé and Si espresso with disclaimers for the words café and espresso.

The challenger’s mark includes the words Si Caffe in common with the challenged mark. The Deputy Commissioner does not consider the extra f in caffe as having a major effect on the average consumer.

The word Si is the extra element where café and espresso are generic words. Si means yes in Italian and may be considered as being a laudatory word that indicates an Italian connection [which is considered as indicating quality and style as far as coffee is concerned].

Although in marks of this nature it is common to analyze the mark into its elements, really similarities of the marks as a whole should be considered when assessing the likelihood of confusion.

Both marks have graphic elements and use fonts that are somewhat different.

Citing Kerly page 313:

“It follows that if the respective marks are similar in respects which are distinctive and origin specific then this will tend to increase the likelihood of confusion. Conversely, if the marks are only similar in respects which are descriptive or origin neutral then this will tend to decrease the likelihood of confusion; indeed it may result in a finding that the marks are not even similar.
The public will not generally consider a descriptive element forming part of a complex (or composite) mark as the dominant element of the overall impression created by the mark; it is the dominant elements of the marks that are critical in the overall evaluation, although it is only if all the other components are negligible that the assessment can be carried out solely on the basis of the dominant element”.

Thus where the words selected are generic or common place and laudatory a greater emphasis may be given to the graphic elements. See the decision concerning Israel Trademark 223957 Chic Design.

In conclusion, the graphic marks are sufficiently different visually to coexist but the word marks, including Si Espresso are too similar to be valid. Sicaffe and Si café sound the same. Si espresso sounds rather different.

When comparing the relative importance of the appearance and the sound, the case law in 5066/10 Appeal Angel vs. Berman (30 July 2012) – specifically Section 27 explains that there is a difference between goods ordered over the counter, where the sound is more important, and goods selected from a shelf in a supermarket or the like, where the appearance is more significant in deciding whether or not there is a likelihood of confusion.

According to Deputy Commissioner Bracha, the mark holder himself notes that consumers select sandwiches and prepared portions from the shelves, apart from one branch which offers a full waiter service. Each package bears the logo and so, reasoned Ms Bracha, the visual aspects are more significant than the sound.

As to customers and distribution channels, the challenger has regular customers and the marks holder primarily serves passing traffic on route . That said, the challenger does serve passers-by and the mark holder may have regular customers. The customer base overlaps although is not identical.

The mark holder’s chains generally sell bars of chocolate, ice-cream and sometimes burgers and chips, chicken wings and the like, whereas the Applicant for cancellation makes salads and bakes bread, and even their thousand island dressing is prepared on premises and not poured from a bottle or dispensed in sachets [MF – I bet they don’t blend anywhere near a thousand islands together though].

Ms Bracha notes these differences but does not consider them significant enough to render the likelihood of confusion impossible as they are in the same class and are substitutes for each other to a large extent.

Other Considerations – Under this heading other relevant factors that might confuse the public or reduce sales are considered.

From the evidence it is clear that the two marks have coexisted since 2008 and since the challenged marks were the result of a rebranding exercise they were in wide-scale use from the beginning. The cancellation proceeding was initiated four years after the mark was registered. The failure of the initiator of cancellation proceedings to warn the mark holder or to otherwise express dissatisfaction does not prejudice his rights to initiate these proceedings.

Nevertheless, failure to act more promptly does to some extent indicate a lack of confusion The initiator of the cancellation proceedings alleges that the proceedings were initiated due to consumer comments and the Kolbotek consumer affairs program investigation.

It is not inconceivable that customers of the initiator of the cancellation proceedings believe that their shops are strewn along Route 6, but they haven’t supplied evidence that this is the case, and since this is a cancellation proceeding and not an opposition, the onus of proof is on the initiator of the proceedings.

The Deputy Commissioner considers that the word marks should never have been allowed to register in the first place and the passage of time is insufficient to remedy this.

Whilst the word marks do appear on receipts and the like, the main use is that of the visual elements in the signs and food markings. As the marks owner uses the logos and word marks almost interchangeably, their claims that the espresso mark is different is undermined.

In conclusion, the word marks 208117, 208121, 208119, 208124, 208128 208130 should not have issued under Section 11(9) of the Ordinance and are canceled.

The graphic marks 208116, 208120, 208127, 208130 are sufficiently distinct that the request for cancellation is rejected based on the analysis above.

Since six out of 10 marks are canceled, the 208116 the initiator of the cancellation proceedings is entitled to costs, but these should be reduced in view of the four marks that weren’t canceled. The initiator of the cancellation proceedings did supply figures but did not provide receipts and invoices to substantiate their claims.

In consequence, an award of 6000 Shekels and legal costs of 20,000 Shekels are appropriate.


I disagree with Ms Bracha’s logic as per the sight and sound of the marks. The goods within the shop are not sold side by side. The ambiance within the outlets may be different. The question is whether people arranging to meet at ‘SiCafe’ in, say Tel Aviv, could find themselves in different outlets and whether adverse publicity such as the consumer program report, or, for arguments sake, an incident involving a customer suffering an allergic reaction, a report regarding cockroach or rat infestation or an incident reported in the paper regarding Kashrut infringement in one chain could adversely affect the business of the other chain. I think that there is a real danger of this.

Si Café’ is a rebranding effort from Sigafreido Espresso Bar. Is it unlikely that a different logo might be considered updated packaging? Logos and packaging change over time. This is appreciated by the trademark office since no issue is ever totally put to rest and changing circumstances can result in a previously resolved dispute flaring up again and requiring a further ruling and possibly a different resolution.

In the case of Eden water, the word phrase Nature’s Champagne in an advertising slogan for still mineral water was considered a serious infringement. There was obviously no likelihood of confusion. There was, however, perhaps a case of ‘dilution’. A similar sounding mark can have this affect. An invitation for a business meeting at Sicaffe may sound less attractive to someone who stops for a coffee and a bag of chips at a self service cafeteria with a similar name.

Eden vs. Eden Wineries – Competing Marks

September 21, 2015

Out of Eden

Two wineries have had the same idea, and have each filed trademarks. One is for Eden, and the other for Eden Winery.

The Israel Trademark Office was not prepared to let two such similar marks coexist, and initiated a competing marks proceeding.


One of the parties filed evidence without the help of legal counsel and then sought legal counsel. On advice of said counsel, they requested to correct their submitted evidence ahead of the hearing arguing that under Section 41 of the regulations, the Commissioner can authorize such amendments.

The other party objects to this, and insinuates that it is destroying evidence, and that there is no procedure for ‘correcting’ an affidavit once it has been submitted. The applicant denies trying to hide anything and claims that the Patent Office has wide discretion regarding allowing such amendments.

The first party responded and the second party requested that the first party’s response be struck from the record. The Deputy Commissioner Ms Jacqueline Bracha decided not to relate to all the responses and counter responses, but only to the issue of submitting further evidence and correcting the submission. She noted that the first request understood that it was permissible under Court Procedural Rules adopted by the Patent Office in the relevant Circular (013/2012 v. 1), and that neither side had asked or received permission for subsequent submissions.

On the grounds that the procedure for competing marks is not set out in the regulations and that the hearing has not happened, the Deputy Commissioner Ms Jacqueline Bracha agreed with the request and allowed the submission.  As to the charges of ‘correcting the affidavit’, Ms Bracha considers that the applicant wishes to exchange one set of evidence with another and not correct the affidavit, and considers this allowable, whether as submission of additional evidence or as correcting the statement of case.

The Deputy Commissioner based her ruling on the following considerations:

  1. the Affidavit related to the key issues of when the mark was first used, extent of use and use in good faith. She was prepared to consider discrepancies between the first and second statements in her final ruling, but considered it appropriate to allow the exchange of evidence.
  2. The submission of the additional affidavit does not turn the clock back and result in a lost of opportunity to the competing party who can cross-examine on the apparent discrepancies if he so wishes.
  3. The competing party can relate to the evidence in the second affidavit in writing up until two days before the hearing.

Noting that such procedural irregularities cause additional work, she ruled costs in favour of the competing party, but due to the competing party submitting three rounds of procedural complaints she limited the interim costs to a mere 500 Shekels.


I am not sure that wine is associated with Eden. Wine and its afflictions were first discussed after the Flood. That as may be, there is no place in Israel that is called Eden. We to have an Arab village called Faredis which became corrupted as Paradise, and there is a Gei Ben Hinom, the Hinom Valley below the Old City of Jerusalem whose name as Gehenna become associated with hell.

The name Eden is used for by a natural food supermarket, by L’Oreal and others. Apart from bottled water marketed under Waters of Eden, the mark is already registered by Absolut Vodka in class 33, which is the same class as wine.

Ketchup Wars

August 20, 2015

Heinz has removed the Hebrew transliteration of Ketchup from bottles of their iconic sauce. The reason? Israel has a standard for Ketchup that Heinz doesn’t come up to. Specifically, Israeli Ketchup contains a higher percentage of tomato extracts than Heinz’ tomato flavored condiment.

I read about this development in Yesterday’s Idiot Acharonot (Israel’s largest circulation fish & chips wrapper newspaper) whilst enjoying a leisurely breakfast on holiday in the Galilee.  The topic is a hot sweet & sour issue among fellow Anglo-American Immigrants who I am in contact with on Facebook.

To those of us who grew up in the UK or the US, Ketchup meant Heinz. Heinz launched its first Tomato Ketchup in 1876, Heinz was at the forefront of exploring natural preservation, and in 1906 was first to launch a Ketchup free from artificial preservatives. To prevent it growing a beard without fungicides, it includes enormous amounts of sugar and vinegar.



There never were 57 varieties of ketchup or indeed of anything else. Nevertheless, worldwide, Heinz is the #1 ketchup.

In the 17th century, the Chinese mixed a concoction of pickled fish and spices and called it (in the Amoy dialect) kôe-chiap or kê-chiap (鮭汁. By the early 18th century, the table sauce had made it to what is now Malaysia and Singapore, where it was discovered by English explorers. The Indonesian-Malay word for the sauce was kecap (pronounced “kay-chap”). That word evolved into the English word “ketchup”, and English settlers took ketchup with them to the American colonies.

In the United Kingdom, preparations of ketchup were historically and originally prepared with mushroom as a primary ingredient, rather than tomato. Ketchup recipes begin to appear in British and then American cookbooks in the 18th century. 

So the term Ketchup doesn’t imply containing tomatoes at all. It really simply means a savoury sauce. Nevertheless, to most of the world, the term relates to the thick dark red sauce that Heinz manufactures and distributes.

In Israel, a variety of condiments are sold as tomato ketchup. The most widely distributed and probably the best of them is Osem’s ketchup, which also comes in a distinctive container that is perhaps as well recognized in Israel as Heinz’ is elsewhere. I prefer Heinz’ Ketchup as it the taste I grew up on. My Israeli kids prefer Osem’s.

To put the argument into some kind of perspective, I’d like to use the analogy of mustard. I am sure that for British ex-patriots like me, mustard is a very strong condiment prepared from a powder. Coleman’s mustard has a long and distinguished history.

Jeremiah Colman founded Colman’s of Norwich in 1814. To create a tangy flavour, he blended brown mustard (Brassica juncea) with white mustard (Sinapis alba). From 1855 the firm introduced its distinctive yellow packaging and bull’s head logo, and in 1866 was granted Royal Warrant as manufacturers of mustard to Queen Victoria. The royal household still uses Colman’s today.

colmans mustard

Now the French make an entirely different condiment called Dijon mustard, that is rather milder. Americans have a sort of yellow ketchup that they call mustard, but which has no similarity to English mustard. One could envisage the UK banning American mustard from being sold as ‘mustard’ without a qualifier, such as ‘American style’ mustard. Similarly, one could imagine Americans requiring Colman’s Mustard to be sold with a government health warning that it should be consumed in small quantities only, and that it is rather different than what Americans are used to.

Israeli bottles of Heinz Ketchup will still have the word Ketchup on their labels in English, just not in Hebrew. Presumably English and American immigrants will see that the sauce is what they are looking for, and Israelis will appreciate that the condiment is something different. It is not a bad compromise. However, as the term ketchup doesn’t actually imply tomatoes and the average consumer is aware that condiments from different companies taste slightly different, and since both Heinz and Osem’s ketchup bottles feature the name of the manufacturer clearly and each comes in a distinctive bottle, I am not convinced that this is really necessary.

namesred mug

There are, of course, Israeli precedents for this type of thing. Nestle’s Nescafe Original was marketed in Israel as Red Mug. They couldn’t call it Nescafe as the term was generic. The Hebrew word Nes means miracle, and, where Elite’s Cafe Namess (soluble coffee) was known as Nescafe (miracle coffee), there was no way for Nestle to obtain a trademark for Nescafe.

Pips Cola

Prior to the Oslo accords, Pepsi Cola was not available in Israel, as Pepsi decided to kowtow to the Arab boycott. A Galilean Arab sold a locally produced cola as Pips Cola. When Pepsi entered the Israel market they tried to get an injunction against the Arab manufacturer. The Israel courts correctly noted that they had abandoned the local market. They ended up having to buy him out.

For British readers of my generation, I refer to classic Goodies Episode “The Bunfight at the OK Tearooms“, where ketchup as a metaphor for movie blood and gore was taken to its logical conclusion.



August 4, 2015


This ruling considers whether a generic top level domain g.TLD can be registered as a trademark.

Traveljigsaw LTD filed Israel Trademark Application TM 241856 for the word mark rentalcars.com for:

Transport services; travel services; car hire services; arranging holiday transport; vehicle rental and leasing services; rental and leasing of passenger vehicles, commercial and industrial vehicles; rental and leasing of cars, bicycles, motorcycles, camping cars, trucks, lorries, vans, coaches, buses, caravans; rental and leasing of vehicle equipment and apparatus; rental and leasing of vehicle accessories, including, luggage carriers, car seats, child safety seats, vehicle trailers, luggage racks, bike racks; arranging for transportation of persons; travel arrangement services; travel reservation services; electronic information services, namely, interactive and on-line information services featuring vehicle leasing and rental and travel information and interactive and on-line reservation services for vehicle leasing and rental; booking and ticket services; arranging and/or booking of holidays, travel, tours, cruises and vehicle hire, including arranging and/or booking of holidays, travel, tours, cruises and vehicle hire via the Internet; arranging and/or booking of seats for travel, including arranging and/or booking of seats for travel via the Internet; travel agency services, including travel agency services via the Internet; including, but not limited to, all the aforesaid provided by electronic means including the Internet; consultancy, advisory and information services relating to all the aforesaid services, all included in class 39.

The mark was applied for on 26 October 2011 and the Trademark Examiner at the Israel Patent Office refused the mark under Section 8a of the trademark Ordinance 1972 as the mark was descriptive of the goods to be protected.

The Applicant disagreed, arguing that the mark was not descriptive and the link between the mark and the services was tenuous. The mark relates to a website and not to car services. The site doesn’t even offer car hire services but merely is a platform for such services. The addition of the .com makes the mark distinctive and not merely descriptive.

The Applicant further argued that various countries such as Italy, Greece and Romania had allowed the mark to be registered. The company was internationally recognized. The applicant did not, however, want the mark based on a foreign registration.

The applicant supported their argument with an affidavit which was not found persuasive. They therefore filed a second affidavit, and, following a final rejection appealed this decision to the Commissioner to rule based on the contents of the file, but requested that the contents of the second affidavit be kept confidential as it allegedly included trade-secrets.


Trade Secrets

Section 23 of the Fair Trade Laws 1999 allows the court to keep certain submissions secret, See 2375/13 Rami Levy vs. Moshe Dahan, 8 July 2013, where relevant considerations such as relevance of information to the proceedings, damage likely to be caused by its publication and the advantage to third parties.

In this instance, the confidentiality request relates to expenses in marketing and publicising the website, number of customers in each country during the period of 2004 to 2012, number of web visits from each country, invoices to Google and other suppliers.

Section 5 of the Fair Trade Laws states that:

A trade secret is business information of any type that is not public knowledge and is not easily obtainable, that provides a commercial advantage over competitors, so long as that the owners take reasonable precautions to keep the information confidential.

The information in question may be considered as trade secrets. In adversarial proceedings, the information is usually necessary to follow the adjudicator’s reasoning. In this instance, however, the proceeding is one of examination between the applicant and the Israel Patent Office and the amount of information that needs to be published is simply the minimum required to make the decision comprehensible.

In this instance, the decision does not require the second Affidavit by Peter Ronney from 2 May 2014 to enable interested parties to follow the decision, and so this information may stay restricted.

Inherent Distinctiveness

The purpose of section 8a is so that articles labeled with the desired mark (in this case rentalcars.com) can know the source of origin of goods or services (Seligsohn page 20).

In general, marks may be generic, descriptive, indicative, random and imaginary, although sometimes the boundaries between these categories are blurred. There is a theoretical continuum between generic and created marks, and the more unique and random the mark, or the more a mark has acquired distinctiveness, the wider protection, and generic marks are not protectable at all. Words that are descriptive of the goods or services must remain in the public domain. “Rentalcars.com” is, accrding to Deputy Commissioner, Ms Jacqueline Bracha, wholly generic and descriptive of the services provided, and the dotcom suffix is insufficient to make the mark unique and distinctive.

The .com suffix merely indicates a generic top level domain gTLD, see Kerley’s Law of Trademarks and Trade Names 15th Ed. (201) P. 859. The issue has been widely discussed in previous ruling 234287 “Hotels.co.il” from September 2013.

Quoting Kerley, the dotcom suffix merely indicates an international profile and therefore does not provide distinctiveness.

The summations noted that the company provides car rental services in Israel and abroad. Consequently, the argument that the company does not ONLY provide care rental services was not given much weight as this was the major activity and other services were related.

The fact that a name is registerable as a domain name does not imply that it is registerable as a trademark as the guidelines and requirements for registering domains in Israel  are very different from the trademark regulations, so the fact that a domain was registered does not free the patent and trademark office from independently examining whether marks are distinctive enough to serve as trademarks.

The commissioner noted that there is no connection between Traveljigsaw – the name of the service provider, and the services provided. Citing the TTAB – the Trademark Tribunal in the USPTO in its ruling concerning 1800.tickets and tickets.com it was ruled that such marks may not be registered even if the term ticket is dropped from the list of goods.

“The test for determining whether a mark is merely descriptive is whether the involved term immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single significant quality, feature, etc. of the goods or services. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-established [*5]  that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Recovery, 196 USPQ 830 (TTAB 1977).

In turning first to the alpha or letter portion of this alleged mark (the word “tickets”), we find from this record that the evidence is overwhelming that the word “tickets” is merely descriptive of applicant’s services, even after all the earlier “ticket” and “ticketing” language has been scrubbed from the recitation of services.

Similarly in In re Dial A Mattress Operating Corp., 1999 TTAB LEXIS 623, 9-10 (TTAB 1999)  concerning the mark 188-mattress:

“We are persuaded that the analysis and rationale set forth in Dranoff-Perlstein and 800 Spirits, supra, would serve as an appropriate complement to the Federal Circuit’s Ginn two-part test in cases requiring a determination of the genericness of alphanumeric telephone number marks. Accordingly, we hold that if the mark sought to be registered is comprised solely of the combination of a designation (such as a toll-free telephone area code) which is devoid of source-indicating significance, joined with matter which, under the Ginn two-part test, is generic for the identified goods or services, then the mark as a whole is generic and unregistrable. Stated differently, a generic term is not transformed into a registrable mark simply by joining it with a toll-free telephone area code which itself is devoid of source-indicating significance.

TMEP section 1209.01(b)(12). Furthermore, it appears that a similar analysis has been adopted by the Office for examination of the ever-increasing number of marks which consist of or incorporate those portions of Internet domain names which are devoid of any source-indicating significance, such as “http,” “www” and “.com”. See Examination Guide No. 2-99, issued September 29, 1999, entitled “Marks Composed, in Whole or in Part, of Domain Names.”

Acquired Distinctiveness

Since the mark is generic it cannot have acquired distinctiveness. Nevertheless, the ruling went on to examine the alleged acquired distinctiveness and, citing Kerley, noted that A domain name registration as such is not an intellectual property right: it is a contract with the registration authority.”

In conclusion, the mark was refused.

Re TM 241856 to Traveljigsaw LTD for “RENTALCARS.COM”, ruling by Ms Jacqueline Bracha, 30 June 2015.

Coveri (Caveri?)

July 1, 2015

Enrico Coveri

On 3 May 2011, Enrico Coveri s.r.l. filed Israel Trademark Application No. 237567 for ‘COVERI’ coveri(ng) clothing, footwear and headgear, all in class 25. The mark was eventually allowed and published for opposition purposes on 30 April 2012. On 23 July 2012, Sar-Go Investment LTD opposed the mark. (The opposition actually related both to Israel TM 237,567 ‘COVERI’ and to Israel TM 237566 ‘ENRICO COVERI’ in Class 35, however, Sar-Go Investment LTD retracted their opposition to TM 237566 ‘ENRICO COVERI’ which was subsequently granted). In parallel with the Opposition before the Israel Patent Office, Enrico Coveri s.r.l. sued Sar-Go Investment LTD for infringing their (pending) mark. [– this is possible under common law rights, albeit not a good idea to sue before the mark issues].

Sar-Go Investment LTD asked the Court to require that Enrico Coveri s.r.l. post a bond [which is common practice where a plaintiff is not domiciled in Israel] and, on failure by Enrico Coveri s.r.l. to do so, the Court closed the case. On 31 December 2012, Sar-Go Investment LTD filed two trademarks, Israel TM 252378 “COVERI KIDS” for wholesale of clothing and shoes for children and youth, for “COVERI HOME” for wholesale furniture and children’s domestic accessories both in class 35. Both applications were suspended at the Opposer’s request until after the present Opposition is concluded.

Opposer’s Arguments

The Oposer claimed that they have used the (unregistered) marks Coveri Kids and Coveri Home for 15 years and had a reputation among their clients for these marks. The Opposer is a wholesaler whereas the Applicant is a manufacturer [this argument, together with the competing marks scenario created seems to be setting the scene for a request for co-existence]. In consequence of their longer usage in Israel, the Opposer claims that they should take precedence over Enrico Coveri s.r.l. in Israel under Section 24(a1)(2) of the Trademark Ordinance 1972, and, under sections 5(11) and 6(11) argued that allowing Enrico Coveri s.r.l.’s application to register would be unfair trade, would mislead the public and be contrary to the public good. In an alternative strategy, the Opposers argued that if Enrico Coveri s.r.l.’s was not canceled, then the two marks should be allowed to coexist due to the difference in sight and sound of the marks, as their desired mark was to be pronounced CAveri whereas the opposed mark was to be pronounced COveri. [I find this argument a little tenuous. The mark does not come with pronunciation instructions, and Israelis include Bedouin, Russian immigrants, American immigrants, Ethiopians, Thai foreign workers and Sudanese illegal immigrants. I doubt that there is a common pronunciation of vowels].

Applicant’s Counter Arguments

The Applicant claims a worldwide reputation in the word Coveri that goes back to the Seventies. [“When The Levee Breaks” — Led Zeppelin (1971) was a coveri song from the Seventies. It was originally recorded by Kansas Joe Mccoy and Memphis Minnie in 1929!]

The Applicant denied the allegations of misleading the public as they claimed to have the reputation and also argued that the Trademark Ordinance only protects registered marks, which the Opposer had not (then) registered.

Furthermore, the Applicant claimed that they were the first owner of the Coveri mark and back in 1986 had applied for ENRICO COVERI in claims 3 and 18, for soap and leather goods, and this the Opposer’s claims should be rejected. The Opposer was acting in bad faith as it was inconceivable that he was unaware of the Applicant who had marketed goods in Israel that were branded as COVERI.


In the District Court proceedings, the current Applicant accused the Opposer of willful infringement and of ignoring requests from the Applicant to cease and desist from using the term Coveri. Furthermore, the Applicant argued that the Opposer’s us of the term Coveri would lead to misleading the public as the Opposer’s goods were sold by the Applicant. The Applicant further claimed dilution of their mark and Opposer’s enrichment at their expense.

In their defense, the Opposer denied knowing about the Coveri brand when they chose their own branding. As wholesalers of clothing brands and not manufacturers, they were unaware of the Applicant’s brand. Furthermore, the Opposer denied infringing the Coveri mark as their marks was Coveri Kids and Coveri Home.

However, as noted above, the District Court Proceedings were thrown out due to Applicant’s failure to post a bond.

The Applicant here, Enrico Coveri s.r.l., argued that the position taken by Sar-Go Investment LTD in the District Court estoppled them from claiming that the current proceeding be dismissed as the parties are the same in both proceedings. Support for this argument was found in Civil Appeal 246/66 Klausner vs. Shimoni.

The Trademark Office considered that the current situation was different as in the previous (court) proceeding, there was no substantive ruling as the case was thrown out. Also, the identities of the parties (and the marks in question) has switched, thus there is no estopple against bringing the case to trial. Furthermore, the legal arguments are different. For additional analysis, see TM 245411 Orez Gamalim Hahav Pninim (graphic logo) Yoram Sassa vs. Yehudit Matck, as published on the patent office website in April.

In conclusion, Deputy Commissioner MS Jaqueline Bracha saw no reason not to rule on the merits of the case.

Inequitable Behavior and the Common Good.

The Opposer claimed that the applications should be canceled as they were filed in bad faith, since the filing occurred 15 years after the opposer was using the mark and gaining a reputation in it. Furthermore, since the Court had thrown the case out, dealing with it on its merits now would be contrary to the public good under Section 11(5). The Applicant also accuses the Opposer of inequitable behavior since the choice of the term Coveri by the Opposer was itself an attempt to cash in on Henrico Coveri’s reputation. Arguments that Coveri means Cover Israeli Kids as the Opposer had claimed were dismissed as fanciful and unconvincing, and the alleged correct pronunciation as CAveri and not COveri as written was further indication of inequitable behavior.

The Opposer considered the marks were not registerable, as, due to inequitable behavior, their registration was impermissible under Sections 11(5) and 39(1a) of the Ordinance. However the Deputy Commissioner considered that this was not grounds for Opposition per se, only, for cancellation of an issued mark. Support for this position was found in the Pioneer decision.

[I am less than happy with the Deputy Commissioner’s ruling that inequitable behavior can be grounds for cancellation of a mark once issued, but not for opposing the mark. I know it is considered a dirty word, but I am relatively formalistic in my approach to the Law and have little time for interpretation of what the law meant to say. However, I can see no logic in allowing grounds of inequitable behavior to be sufficient to have an issued mark canceled, but not sufficient grounds to have a pending mark opposed. This seems senseless. I note that I disagreed with Ms Bracha in the Pioneer case as well  so at least I am consistent. Perhaps consistently wrong, but consistent.]

According to Ms Bracha, Section 11(5) was to cover cases such as to prevent an opponent to prevent an applicants from using opponents copyright protected artwork as trademarks.

Misleading the Public and Unfair Competition

As far as misleading the public is concerned, Ms Bracha considers that the mark has to be at least widely known if not formally ” a well-known mark”. She went on to apply the triple test to examine the similarities between the marks. As far as the sound of the mark is concerned, Ms Bracha noted that the Opposer claims that Coveri Kids has a patah sound (“a” as in cow – i.e. Cah-ver), whereas in on Henrico Coveri’s Coveri, the Sound is a holum “Oh” as in Copper. Noting that they are written the same way, Ms Bracha considers it unlikely that one can ensure that the marks are correctly pronounced and doesn’t think that anyone other than the Opposer’s who would be aware of the difference. [here I disagree. The word Coveri has a Kamatz Qatan and is pronounced Oh as in Copper by Yemenites and Ashkenazim but as an Ah by Spanish and Portuguese and in the Standardized Hebrew pronunciation. Nevertheless, the word, written in English (Latin) letters, could certainly be pronounced either way. This reminds me of the road sign conveniently placed near Heathrow Airport to confuse tourists. It points to Slough. Is the ough an oo as as in through? Is it an uf as in rough, an ‘or’ as in bought? No, it’s an ow as in bough!]

In the Coveri mark and in Coveri Kids and Coveri Home, the dominant word is Coveri. Furthermore, the other words are descriptive and lacking in independent distinctive character. Consequently, the marks are visually and audibly very similar. Both Opposer and Applicant sell clothing and children’s goods, one wholesale and the other retail. The client base is different, but it still overlaps and one could imagine a purchaser of Coveri clothing could go into a COveri Home shop to buy furniture or accessories. Whilst, it is certainly possible that Henrico Coveri is using his name for branding purposes and Coveri Kids means Cover Israeli Kids so there is no intent to confuse, however, it is unlikely that the public would be aware of this. The Opposer has stores in the upscale Kikar Hamedina of Tel Aviv. The Applicant’s witness was more circumspect as to where they were using their trademark.


Reputation in a specific market sector is judged by the time period the brand has been in use and the amount of publicity and marketing invested in linking the product to the brand name.

Coveri kids have shown 15 years history of the mark. However, Mina Tzemach’s market research has shown low brand penetration, nevertheless, Ms Bracha agreed with the Applicant that the onus is on the Opposer to show that they have a reputation in the mark and not that the Applicant does not.  Ms Tzemach’s affidavit was an appendix to another one and not a freestanding document. However, the The Opposer did not choose to cross-examine her on her findings which rather strengthens them.

Coveri admitted that they had never opened a shop, but claimed that their neckties and other things were sold in boutique stalls. Consequently, it appears that Coveri Kids and Coveri Home have a larger footprint in the market.

Equitable Behavior

It seems that Enrico Coveri acted after discovering that Coveri Home and Coveri Kids were strong marks in Israel. They first sent cease & desist letters and only subsequently filed their own marks, and later still, filed in the District Court. Under cross-examination from Adv. Tony Greenman, Enrico Coveri’s witness spoke about design shows abroad abut did not answer questions about their local advertising. Despite prompting by both Adv. Tony Greenman and by the Deputy Commissioner, the witness failed to show that the mark had been used in Israel prior 2011 and had local reputation. This lead the Deputy Commissioner to suspect that the Applicant’s registration was merely to prevent being sued by the Opposer and was not indicative of actual use or intent to use.

Although in Israel one can apply for a mark not in use if there is intent to use, however the intent should be genuine. The Israel courts view defensive trademark practices with a jaundiced eye.

Such an approach is also true in the US:

A lack of bona fide intent to use is a ground for an inter partes opposition proceeding to an application before the Trademark Board. Aktieselskabet, 525 F.3d at 21; McCarthy § 20:21, at 20-65,66. Lack of bona fide intent to support an intent-to-use application also may render an application void ab initio upon challenge in federal district court.” (W. Brand Bobosky v. Adidas AG, 843 F. Supp. 2d 1134, 1140 (D. Or. 2011).

The long and real usage by the Opposer and lack of cooperation by the Applicant’s witness lead Ms Bracha to consider that the mark should be refused under Section (6)11 of the Trademark Ordinance.

Previous Rights to the Mark

The Opposer claims prior rights to the mark under Section 24(ia)(2) of the Regulation. As far as distinctive marks is concerned, this is a relevant issue.

As cited in ITT. vs. Ratfone Import LTD, 23 June 2009:

“Furthermore, it is important to note that when a mark is canceled from the register or even if it was never registered, this does not indicate a lack of proprietary rights of the owner. There is a right of reputation which is protected in unregistered marks.

In this instance, however, the Opposer did not register their mark. They did not act to have the mark registered, and the present instance and the previous Court case were superfluous. Having ruled that the Opposition should be accepted under Section 11(6), the ownership of the marks is superfluous, particularly as the Opposer has long established usage and the Applicant has not shown usage in Israel. However, the lack of registration by the Opposer should be taken into account when ruling costs.


Registration of the Italian designer’s mark was refused without a ruling of costs to the Opposer. The Opposer’s marks (Coveri Kids and Coveri Home) can continue to examination following this ruling.

Israel TM 237567 “Coveri” to Enrico Coveri, Trademark Opposition by Sar-Go Investment LTD, Ruling by Deputy Commissioner, Ms Jaqueline Bracha, 27 May 2015


Potahto or Poteitoe?

Gefen or Gafen?

Pronunciation aside, this case bears more than a passing resemblance to the Versace case, since we have a well know international design house and a couple of Israeli stores using the name in ambivalent faith. I therefore suspect we haven’t heard the last of this.

Connectivity, Buck Passing and those Damn Marks

June 21, 2015


We have connectivity issues getting into the Israel Patent Office Secure Trademark Database. Where does one start?

Well there are some very nice people in the trademark department who after making other inane suggestions pass the buck to the Govt. Internet Access Helpline.

The Govt. Internet Access Helpline wants to know why do we want access to a govt. website? Are we government employees? Are we subcontractors working on a program?

After explaining the concept of professional legal representation opposite the patent office, the Helper-on-line asked if we can access the services without the smart-card. We explain that this is a new website and this is the only way to do things now. Paper filings are no longer acceptable. Logging in with an email and password is good for filing new applications, but for oppositions, etc. we need internet access using the smart-card.

Q. “Is the website up and running?”

Q. “I provide Internet support for government websites and I can’t get in either.”

A. Well, it’s supposed to be up and running. The nice people in the trademark department think its up and running.

Q. “The problem is your smart card. You have a lawyer’s smart card. Contact Comsign.”

So I contacted Comsign. Turns out that the card is NOT a lawyer’s card. It is a card issued by the Israel Patent Office for accessing the website and for filing documents with the Israel Patent Office. Does the card work? Well it did until the new site went up. Have you registered for the new site? Well we haven’t been asked to. We’ve been talking to people in the trademark office. If they thought we needed to register, they would presumably have registered us, no?

So the buck was passed from trademark office to computer support to connect card connector, to administrator and round and round we go!

Caucus Race

With apologies to Ezekiel, to James Weldon Johnson (1871–1938) and possibly to his brother, J Rosomond Johnson, to be sung to the tune of Dem Bones:

dem bones

Damn Marks!  

Reshut Patentim Connected the Damn Trademarks
Reshut Patentim in Department of Trademarks
Reshut Patentim  Connected Damn Trademarks
Now Hear the Commissioner’s Circular! 

Smart card connected to card reader
Card Reader connected to USB port
USB port recognized by Mother#$%^&
Computer’s connected to the WiFi
The WiFi’s connected to the server
The Servers’ connected to the Internet
Internet’s Connected to Patent Office Portal
Patent Office Portal is connected to Trademarks-on-line
Trademarks on line is connected to the database
Now Hear the Commissioner’s Circular!

Damn Marks, Damn Marks Gonna Walk Around
Damn Marks, Damn Marks Gonna Rise Again
Damn Marks Damn Marks Gonna be Paperless
Now Hear the Commissioner’s Circular! 

Damn Marks, Damn Marks, Damn Trademarks
Damn Marks Damn Marks Damn Trademarks
Damn Marks Damn Marks Damn Trademarks
Now Hear the Commissioner’s Circular! 


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