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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Soho in Israel

March 20, 2014

SoHo

Collection Soho LTD owns a chain of design shops selling furniture, kitchenware, ornaments, bags, jewelry and fashion accessories. The chain has been in existence for 10 years, and in June 2013, the company was awarded a trademark for the word Soho in class 35, covering Shops for sale of designed goods in different consumer sections including – foodware and tableware, office supplies, appointment books and planers, calendars, kitchenware, baby and infant products, greeting cards, bathware (sic), furniture.

When Electra Real Estate LTD and Ben Ephraim and Sons, Building and Entrepeneurship LTD publicized a plan for a shopping mall called So Ho, Collection Soho LTD filed for an injunction, under the Equitable Trade Laws and the Trademark Ordinance.

Judge Gidon Ginat of the Tel Aviv District Court heard the case. As is his custom, and as he explained at an AIPPI conference in Israel a few months back, Judge Ginat prefers to address the whole issue in one hearing rather than rule on temporary injunctions and let cases drag out. He ruled that under both trademark infringement and the tort of Passing Off, the relevant test was whether there was an objective likelihood of confusing potential customers such that someone might purchase the goods of one company thinking that they were purchasing the goods of the other company.

Based on the fact that New York and London have Soho districts of a Bohemian, arty character, and with reference to Judge Gronis’ decision (Supreme Court Rules that Usage of “Shemesh” by Competing Restaurant is Kosherconcerning the word Shemesh, where the now head of Supreme Court ruled that registration of the word Shemesh (Sun) as a trademark by a grill restaurant, was insufficient to prevent others from calling their restaurants various names that included the word Shemesh, Judge Ginat ruled that in addition to the classic triple test for likelihood of confusion and the distinctive-indicative-generic term spectrum, he went on to rule that there are words with a universal aura and that it was difficult to accept that someone could take ownership over such words, and felt that Soho was in that category.

Although there is a chain of design shops called SoHo, there are other enterprises using the name Soho as part of their name. Here there was an interest in developing a shopping precinct called SoHo, not a single shop. Judge Ginat felt that there was no real likelihood of confusion, and therefore denied the injunction and ruled that the precinct could use the name SoHo. But should use a different font and not use the phrase Collection SoHo.

In the circumstances, due to the other goods sold in the shopping mall, Judge Ginat ruled that it would be clear to customers that the mall was not related to Collection SoHo, and threw out the case. However, he also ruled that the defendants could not use the same font as that used by Collection Soho LTD or use the phrase Soho Design.

13408.02.14 Collection Soho LTD vs Electra Real Estate LTD and Ben Ephraim and Sons, Building and Entrepeneurship LTD, Tel Aviv District Court before Judge Ginat, 9th March 2014

COMMENT

The term Soho conjures up a bohemian arty sort of lifestyle to Americans due to the neighborhood called South of Houston or Soho for short. To the British, the term indicates London’s historic red light district

There are 13 marks for Soho in the trademark registry, six of which have lapsed and 7 that are in force. For example, International Paper Company of Memphis, Tennessee, U.S.A. has a trademark No. 202063  for Disposable containers for use in the food and beverage service industry, namely, cups, lids, bowls, plates and serving platters; all included in class 21 and mark 202062 for Disposable containers made of paperboard for use in the food and beverage service industry, namely, cup carriers, cup sleeves, boxes, buckets, and bags; all included in class 16. Two of the lapsed marks, Soho and Soho Club were for registered to a Tango LTD, for clothing in class 25.

It is not clear to me why the word Soho should not be monopolized in Israel by registration of a trademark. If such a mark is registered, I fail to understand why the mark owner should not be able to enjoy a monopoly for the word.

I can see that the two signs use different fonts, but only can tell this as they are reproduced side by side. Both signs use san serif thin letters. The H is more or less identical. The S is slightly different and the O is more round in the complainant’s logo and more oblong in the defendants. The overall impression is very similar. I think this indicates intentional passing off, or at least inequitable behavior.

Nevertheless, it is difficult to criticize Judge Ginat for following Supreme Court precedent. His analysis is solid, and he has indeed moved this case quickly through the system. However, I was critical of the original Shemesh decision. Whilst judges are bound by precedents, bloggers aren’t. My concern is that whereas under common law, the likelihood of confusion may be the issue. trademarks are registered and are generally considered a form of property. If a mark is registered for design, why shouldn’t the mark owner be considered just that, an owner of a piece of abstract property? Can the existence of other retailers selling designer goods be considered as dilution? I would argue that judge Grunis’ decision was wrong since it dilutes the Shemesh brand name and this decision has a similar effect.

What Judge Ginat is doing essentially, is ruling that the right of any third-party to use a place-name like Soho for a shopping area over-rides the rights of a trademark owner to stop this unless there is a likelihood of confusion of origin of goods. There are two torts here. Likelihood of confusion and a separate trademark infringement issue. If the only issue is likelihood of confusion, why register trademarks? It will be interesting to see if this decision is appealed, and if so, what the verdict will be.

One final comment: the late Rabbi Irving Jacobs, formerly Principle of Jews College London, once told me that Rabbi Farber, the minister of Soho used to say that on leaving the synagogue one could make the blessing בורה מיני זונות.


Partial Cancellation of Mark Due to Applicant Not Responding

March 9, 2014

Brands Environment Establishment filed Israel Trademark Application Number 239210, as national phase of International Trademark Number 1075998. The mark, Bosco, is shown below.

Bosco

The mark was applied for in classes, 9, 12, 20, 29, 30 and 42.

Robert Bosch filed a detailed opposition to the registration in classes 9 and 12, and the applicant failed to respond.

The Trademark Office cancelled the registration in classes 9 and 12.

This means that the mark cannot be used for:

Eyewear, glasses and sunglasses, relevant pans, fittings and accessories, specifically excluding safety eyewear and safety goggles, helmets.

or for

Vehicles; apparatus for locomotion by land, air or water.

The mark is, however, still registered in classed 20, 29, 30 and 42 for an eclectic range of goods as follows:

Furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics specifically excluding industrial furniture such as modular work place units, including work tables, workbenches and work seats.

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Architectural and design services, services linked to interior design. 

It is odd, how the same name can be used for a very wide range of diverse uses. Wikipedia lists about dozen people and a further dozen place names for Bosco.

My favorite are Sgt. Bosco “B.A.” Baracus, a The A-Team character, and Bosco, a dog elected honorary mayor of Sunol, California.


Competing Marks for Human Resources

March 7, 2014

254763

The Israel Trademark Office received two trademark applications for service marks from different Human resource companies. One (TM 235190) was for the letters HRS , the other, (TM 254763) filed slightly later, was the graphic mark with the letters HRUS shown above. Both applications  are in class 35. I was somewhat surprised that the marks were considered similar enough to initiate a competing marks procedure under section 29 of the Trademark Ordinance 1972. In such cases, the usage of the mark and good faith considerations may outweigh the first to apply in deciding which mark to register first. Once one mark is registered, the other mark may be examined, but the first mark often precludes registration.

In this case, the second applicant filed evidence but the first applicant was generally unresponsive. The second applicant asked for a ruling based on the submissions. The Adjudicator of Intellectual Property Ms Yaara Shoshana Caspi of the Patent Office was unhappy about ruling in such a manner, without giving the first applicant a chance to defend themselves. She couldn’t even ascertain that the second applicant or the agent of record had sent copies of filed documents to the first applicant. She awarded costs of 2000 shekels  against the first applicant, and ordered that all papers be sent direct to first applicant and not only to their legal representative. She also gave the first applicant an opportunity to switch legal counsel.

Competing service marks TM 235190 and TM 254763 – Interim ruling by Ms Yaara Shoshana Caspi, 11 February 2014.


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