Trademark for Kappa Cigarette Brand Opposed

February 26, 2015

Kappa

Karelia Tobacco Company Inc filed Israel trademark application 213924 for the word Kappa (non-stylized). The mark covers cigarettes, tobacco and tobacco products, lighters, matches and smoker’s requirements, all in class 34. The application was filed in August 2006, and was accepted in March 2010 and published for opposition purposes. Basic Trademarks S.A. opposed the application. Basic Trademarks S.A. has a brand of sports clothing Kappa – with the logo shown above.

Among other grounds, Basic Trademarks attempted to amend their statement of case to oppose the registration on the Section 7a(d) of the Law to Limit Advertising and marketing of tobacco products. This attempt was thrown out based on a ruling that limiting cigarette advertising was not grounds for preventing a trademark from being registered. Furthermore, tobacco brands could not fairly be considered unregisterable under grounds of Public Order.

Kappa appealed this interim ruling to the District Court (Appeal 15171-02-11) who ruled that public order was a consideration. The statement of case was then amended. The sides submitted their evidence, but forgo the need for a hearing, allowing the Israel Patent and Trademark Office to rule on the Opposition based on the written evidence and submissions.

Opposer’s Case

The Opposer argued that they were a world leading clothing company that made shoes, clothing and head-wear for leisure wear, sports, and for sporty fashion. The mark was well known in the US, Europe, Canada, China and Israel.

The Opposer has 13 marks including the name Kappa in various classes, with and without the logo shown above, where the word Kappa is dominant. The Opposer claims to have invested significant resources in advertising and marketing, worldwide including Israel. The turnover reaches millions of Euros a year. The company promotes sports and international sports competitions.

Due to the advertising, Kappa is a well known mark, as the term is defined in Section 1 of the Ordinance, and thus under Section 11(14) the mark cannot be registered by others in other classes as this would create a linkage to the clothing manufacturer which would damage their reputation.

The mark was also not registerable under Section 11(6) as to register it would dilute the sports company’s mark, damage their reputation and be unfair competition.

Furthermore, following the appeal, the application should be refused under Section 11(5) as being against the public good – Section 7a(d) of the Law to limit advertising and marketing of tobacco products was legislated since tobacco is unhealthy. Finally, the applicant had not actually sold tobacco products under the Kappa brand and so would not suffer significant losses from having the mark refused.

Applicant’s case

Karelia Tobacco Company Inc argued that Kappa is famous only for the word together with the back to back male and female and the word itself is not well known.

Trademarks and branding for cigarettes is allowed in Israel and so public order considerations should be considered irrelevant. The word Kappa is similar, but there is no conceptual relationship between the goods. (What the argument is really saying is that since Kappa promotes a healthy sporty image and cigarettes don’t fit into that image, noone would think that Kappa cigarettes are a product of the sporty fashion company. Both marks are used with other elements and the possibility of damage to Kappa sportswear from Kappa cigarettes is not proven.

The distribution channels and customer base is very different. Kappa is a Greek letter and like Delta, although can be monopolized, cannot be monopolized across classes. For example, the word Kappa is in use by third parties in the print industry.

Both in Israel and abroad the same mark may be used for cigarettes and for sports goods with both marks coexisting. (This argument is plausible, however, no examples are given).

In conclusion, applicant rejects claims of confusion, unfair competition and dilution, and argued that Kappa had not proven that their mark is well known in the meaning of the term as far as well known marks is concerned. Furthermore, the advertising limitations on cigarettes cannot be applied to prevent the mark from registering.

Kappa submitted evidence of turnover and advertising expenditures and a Wikipedia excerpt concerning fashion cigarettes.    It seems that Yves Saint Laurent, Givenchy, Versace, Pierre Cardin, Christian Lacroix and Cartier have, at one time, each allowed their name to be linked to cigarettes. It was argued that sine fashion brands do allow their names to be used with designer perfumes and cigarettes, a cigarette with the same name as a fashion brand could be considered as linked to the fashion brand, creating a confusion regarding origin.

The Ruling

Citing precedents, the Adjudicator Ms Shoshani Caspi ruled that in oppositions, the burden of proof lies with the Applicant. Nevertheless, the Opposer has to base their opposition on facts.

The parties forgo a formal hearing with cross-examination and allowed the Adjudicator to rule on the evidence submitted.

Firstly, Ms Shoshani Caspi examined whether Kappa could fairly be considered a well known mark for fashion at the time that Kappa was filed for cigarettes, allowing it to prevent marks from being registered in additional classes, i.e. not just for fashion accessories.

The determination of whether Kappa could be considered a well-known mark was based on market penetration in the relevant population sector, the extent of usage of the mark and its longevity, long term advertising, inherent distinctiveness, whether the mark was in exclusive use and to what extent the owners of the mark invest in combatting infringers. The mark had to be considered well-known in Israel and not just abroad.

Al the evidence pointed to the mark being well known, despite the fact that generally the name Kappa is generally used together with the logo. The mark has been in use since 1969 and is mostly used in connection with sporty clothing. The opposers have an international portfolio of 600 marks including the word Kappa alone, not just as part of Robe De Kappa or together with the emblem. They have sponsored various football teams in Italy, Holland, France and Spain. The brand has millions of dollars of annual income from sales in Israel and has sponsored various local football teams including HaPoel Tel Aviv and Betar Jerusalem.  Thus the KAPPA mark was well-known in Israel as well.

The second issue is whether, due to the phenomenon of fashion cigarettes, whether the public would identify KAPPA cigarettes with the fashion brand. Here, when extending a mark into new categories of goods, there is a need to act sensitively and to weigh up the interests of the competing parties.

Ms Shoshani Caspi was impressed that both fashion and cigarette usage are susceptible to trends and found the phenomenon of fashion cigarette branding persuasive.

The fact that the cigarette brand had not yet launched strengthened this, and she was also convinced that a brand associated with the fashion house could do harm to the fashion house’ image.

Since the fashion house had a sixty year history and the cigarette company could not provide any reasonable explanation for the choice of name, she suspected inequitable behavior and considered dilution a real possibiliity.

In conclusion, MS Shoshani Caspi ruled that the Kappa fashion mark was well known, that fashion and cigarettes could confuse confusion and dilution and rejected registration of the Kappa brand for cigarettes and rejected the registrations under Section 11(14 and 11(6).

Ruling re Opposition to by Kappa clothing to Kappa as Israel Trademark 213924 “Kappa” for cigarettes, Ms Shoshani Caspi, 22 January 2015

 

COMMENT

The fashion brand argument ignores the fact that haute-couture and sports goods are not the same, and that fashion cigarettes are a relic of a bygone era when smoking was certainly socially acceptable, but more was actually considered cool and sophisticated, and not just among teenagers. Put another way, when cigarettes were fashion accessories, fashion houses were happy to have their names associated with cigarette brands. That is not the case now, as evidenced by Kappa’s arguments. That said, the decision seems reasonable.

 


Clip Fresh Ruling Upheld On Appeal

February 25, 2015

clip-fresh

Back in July 2014, the Israel Patent Office allowed the Clip Fresh logo mark of Farm Chalk LTD to be registered despite an opposition from earlier registered ‘Click and Fresh’ to Millennium Marketing Intertrade (1999). The Examiner considered the likelihood of confusion to be unproven. See here for more details.

Millennium Marketing Intertrade (1999) appealed the decision and the decision regarding costs (reduced from 92,932 Shekels to 80,000 Shekels) to the Tel Aviv District Court under the Right to Appeal.

They considered that despite the different appearance of the marks, when the sound of the mark is considered, there is a likelihood of confusion.

Furthermore, “By Farm Chalk” –which appears in the mark, was never actually used, rather the mark holder used the slogan “Keep it Fresh”, so the decision to allow the registration on the grounds that the words By Farm Chalk prevented confusion should be reversed.

.The Appellant argued that the F of Fresh looks like an ampersand (&) and the mark holder simply adapted their mark and was confusingly similar in appearance. Furthermore, the costs of 80,000 Shekels were disproportionate to the work involved in the opposition.

The mark holder argued that the Appeal should have been filed within 45 days and was actually filed 4 months after it issued and so should be thrown out. Furthermore, the Click and Fresh mark only issued after disclaiming the descriptive words ‘click’ and ‘fresh’ and so cannot be considered misleading the public as to the source of the goods. The costs were not much different from costs awarded in other cases and Appeals to reduce costs should only be accepted in extreme circumstances.

The appeal was filed within 45 days of the costs ruling though not within 45 days of the main ruling. Judge Yehudit Shnitzer considered that the costs of 80,000 Shekels were indeed significant and could be grounds for deciding to file an appeal. She therefore was prepared to review the case and rule on its merits.

As to the phonetic similarity, Judge Shnitzer considered that food containers are not bought by requesting the goods by brand over the counter, but by picking up and examining the goods. She therefore considered that the difference in visual aspects of the marks outweighed the similarities in sound.

Neither mark would have issued for the words, only for the stylized logo. In an appeal regarding the registration of a mark there was no room to consider whether the mark was actually used as registered, since this was a separate ground for canceling a mark after a period of time, but not within the scope of the appeal. Since the click and fresh registration only issued by disclaiming the words ‘click’ and ‘fresh’, the protection afforded by the sounds of these words is very limited.

The marks have to be considered in their entirety, with the emphasis on the visual aspects not the audible ones, and noting similarities in disclaimed words, but not giving such disclaimed words much weight.

As there are a lot of similar goods on the market, someone interested in a specific brand would be expected to take care.

It is important to prevent trademark abuse and policy dictates having to avoid trademarks providing an effective monopoly on goods having certain characteristics, rather than serving as an indication of source. Allegations of free riding, unfair competition and confusing the public were rejected in favour of free competition.

As to the costs awarded, Judge Shitzer noted that the costs were based on actual cost submissions and were calculated and not random. She accepted that there were cases with a single hearing and no witnesses from abroad where the costs awarded were much lower. She did not, however, consider the costs to be outrageous and did not see fit to interfere.

After ruling to reject the Appeal, Judge Shitzer awarded a further 30,000 Shekels costs against Millenium Marketing Intertrade (1999).

Appeal to Tel Aviv District Court 27992-08-14 Millenium Marketing Intertrade 1999 vs. Farm Chalk Investment LTD. Concerning Israel trademark opposition ruling concerning Farm Chalk’s stylized graphic mark by Asa Kling, the appeal ruling by Judge Shnitzer, February 2015    

COMMENT

This decision vindicating the Commissioner’s ruling is correct. I think that the decision also shows that Ms Yaara Shoshani-Caspi’s ruling re Humus B’Ribua is wrong.


Cost ruling re Brands’ Bosco Brand

February 23, 2015

Brands Environment Establishment filed trademark applications 239210 and 240584.

Bosco

TM 239210 is for the logo BOSCO as shown above, which covers 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 in class 20, For 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 in class 29, for 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 in class 30 and for Architectural and design services, services linked to interior design in class 42. As originally filed, the mark  also covered goods in classes 9 and 12.

TM 240584 is for the word mark Bosco and covers Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices in class 3, Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments in class 14, Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery in class 18, 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 in class 20, Clothing, footwear, headgear in Class: 25, Games and playthings; gymnastic and sporting articles not included in other classes, decorations for Christmas trees specifically excluding toys that resemble power tools or kitchen appliances in class 28, 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 in class 29, 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 in class 30, Advertising; organisation of exhibitions for commercial purposes; business management of sales outlets; business consultancy relating to franchising; retailing of cosmetics, perfumery, spectacles, watches, jewellery, stationery items, furniture, chinaware and tableware, leatherwear, bags, handbags, suitcases, trunks and travelling bags, textiles and textile goods, bed and table covers, clothing footwear and headgear, gymnastic and sporting articles in class 35, Education; providing of training; entertainment; sporting and cultural activities in class 41, and Services for providing food and drink; temporary accommodation in class 43.

As originally filed, this mark covered classes 9 (Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus), class 12 (motors and engines for land vehicles; couplings and transmission components for land vehicles; and air cushion vehicles) and class 42 (services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer programmers, etc.).

The trademark applications were filed through the Madrid Protocol where, among other countries, Israel was specified . In response to Robert Bosch LTD filed a detailed opposition to the registrations in classes 9, 12 and 42. The Applicant did not file a counter-statement.

Consequently, according to a ruling published on 12 January 2015, these marks were considered successfully opposed in classes 9, 12 and 42 by Robert Bosch LTD and the registrations were amended accordingly. Robert Bosch then requested costs of 3208 Shekels in fees and 2200 Euros in lawyer’s fees.

Ms Shoshani Caspi  ruled that in general, the losing party should bear costs. In this case, however, the request for costs was not sufficiently detailed for the adjudicator to decide that they were reasonable, justified and proportional. The case was closed early on after the Opposers filed their detailed statement of case but did not have to respond to arguments.  Then again, the applicant failed to note that the applications were being abandoned. In conclusion, Ms Shoshani Caspi ruled fees + 4000 Shekels.

COMMENTS

Presumably, Bosch’s representatives informed them of the Bosco marks, received instructions to oppose, filed two oppositions with detailed statement of cases, monitored for responses, reported the successful opposition and requested costs.  Even if the request for costs was insufficiently detailed, I don’t think that 4000 Shekels costs is very much for this amount of work.


A Perfectly Ridiculous Trademark Registration

February 22, 2015

Perfect

Danny Lipaz filed Israel Trademark Application No. 246231 for the ever so slightly stylized word mark “Perfect”. The application covers clothing, footwear, headgear, T-shirt, sweatshirt, underwear, sweatpants all in class 25.

Perfect Shoes LTD opposed the registration.

The parties came to a agreement regarding the types of goods and geographical distribution of usage and asked the Israel Patent and Trademark Office to ratify the decision.

Ms Shoshani Caspi felt that the agreement was in personam and thus its details were not appropriate for the Israel Patent and Trademark Office to relate to, since the Israel Patent and Trademark Office maintains an in rem register.

Since the mark was allowed but the Opposition was not considered at all, there was no legal or logical basis to rule on any limitations. Cnsequently Ms Shoshani Caspi refused to endorse the agreement and gave the parties 14 days to decide on how they wished to proceed, with the default being submission of evidence.

COMMENT

Here I think Ms Shoshani Caspi is correct to require the opposition proceeding to continue, but I can’t see how the word perfect can be registered as a trademark since it is laudatory.


Old Jaffa

February 16, 2015

jaffa orange    old jaffa

A Mr Yehuda Malki filed two trademark applications, 220542 and 220581 for Old Jaffa, for Preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; all included in class 29 and for coffee, tea, cocoa, sugar, rice, semolina, tapioca, coffee substrates, cereals, breads and baked goods, sweets, ice-creams, honey, yeast, baking powder, salt, vinegary sauces (flavorings) and spices in class 30, respectively.

On allowance, the Council for Creating Plants and for their Marketing – Citrus Division opposed the marks.

Israel trademark no. 237678 which covers soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3 issued without opposition, but the the Council for Creating Plants and for their Marketing – Citrus Division field for cancellation of the mark.

On 12 September 2012, the Commissioner Asa Kling ordered the cases to be heard together and on 31 October 2012, the three cases were heard.

The Applicant, unrepresented, informed the Commissioner that he did not intend cross-examining the Opposer, and so the Opposer was exempted from appearing.

The Opposer considered that using the term Jaffa for anything not including citrus fruits was false labeling as the term was understood in the trademark ordinance and registration of the mark was therefore against the public good.

The Applicant rejected this interpretation and considered that considerations regarding false labeling were beyond what should be considered when registering trademarks. The public good should allow him to go about his business.

Section 11(5) of the Trademark Ordinance 1972 states that trademarks that are immoral or against the public good cannot be registered.

Section 2a of the Ordinance states that Jaffa is an appellation of origin under the law of Appellations of Origin 1965, and suing the word Jaffa, Jaffas or Joppa in Hebrew or English, or marks including the word or sounding like the word was not allowed under Section 2. Section 2b states that addition of words such as kind, type, copy, goods originating or the like did not stop using these terms form being forbidden.

According to the Commissioner, the concept of “public good” is a general principle that the courts can apply wherever they consider it appropriate, and this changes from  time to time and from place to place. However, as far as the term Jaffa is concerned, it is an appellation of origin that has specific legislation designed to advance Israel’s citrus industry.

In the legislation relating to the appellation of origin it is noted that the special law was drafted as the term Jaffa was being used for citrus fruit not originating in Israel and for other goods that are not citrus fruit and are not necessarily from Israel.

Consequently, the Commissioner accepted that the appellation of origin was designed to promote Israel’s citrus industry worldwide. Marks such as Old Jaffa were, indeed, against the public interest.

The Applicant considered that the term ‘Old’ was different from type or kind, and effectively removed the term Old Jaffa from the special law protecting Jaffa.

The Commissioner considered that arguably a law from the Sixties may be no longer relevant and noted that back in 2005, the previous Commissioner considered whether or not to extend the appellation of origin protection for Jaffa, but noted that the protection was extended and is in force.

Furthermore, since the word JAFFA is protected as a trademark (Israel trademark 20481) the requested mark should not be considered distinct within classes 29 and 30, and shouldn’t be allowed to be registered.

Despite the fact that fresh fruit and dried goods are often sold in different places, this is not always the case. The term old is not enough to allow registration, since Old Jaffa refers to Jaffa (in other words, it’s  not like the difference between York and New York).

Were the applicants’ goods related to the Old City of Jaffa, possibly consumers would associate the location separately from citrus fruits but currently that is not the case. Consequently, trademarks 220541, 220542 are refused and 237678 is canceled. The parties are invited to request costs.

Decision re Opposition to 220542 and 220581,  and cancellation of 237678 re Old Jaffa; Malki vs. the Council for Creating Plants and for their Marketing – Citrus Division by Asa Kling, 4 January 2015.

Comment

Currently, to provide Jaffa oranges all year round, the term is used for marketing oranges originating in South Africa and not just in Israel.

Still, the District Court over-ruled the previous Commissioner and allowed the mark to be registered. See here.

Still, I think that the fact that the term is no longer an indication of the origins of the citrus fruit does provide justification to interpret the rule narrowly, and, in my opinion, the term Old Jaffa does conjure up the coastal town and not Jaffa Oranges. Certainly, 40 years ago, the restaurant in London called Old Jaffa was trying to invoke the place and not the fruit.  Nevertheless, following a court ruling, the issue may be beyond a Commissioner to cancel the law or to interpret it narrowly. If Yehuda Malki decides to appeal this ruling to the courts, it will be interesting to see what happens.

 

 


“The Duchess! The Duchess! Oh my dear paws! Oh my fur and whiskers!”

February 15, 2015

The Hunter Group Ltd. Pty which is a Thai company filed Israel Trademark Application No. 190,755 for a design including the word ‘Sleeky’ together with a couple of paw prints. The application is in class 31 and covers pet food including dog food and cat food; all included in class 31. The mark is shown here:

sleeky

The Iams Company (a US manufacturer) have a registered mark 91789 for a footprint as follows:

Iams poor-print

Their mark also covers foodstuff for animals in the same class.

In practice, the Iams company markets pet foods as the brands Eukanuba and IAMS together with the footprint as below:

Eukanuba nad Iams

When the Israel Patent Office allowed the 190,755 mark, the Iams Company filed an Opposition which was presided over by then Deputy Commissioner Noah Shalev Shmulevezh, and eventually rejected in a ruling in June 2012 by the Israel Commissioner of Patents and Trademarks, Asa Kling, based on the material in the file (without a hearing).

The Commissioner applied the ‘triple test’, and noted that although the goods and channels of marketing are similar, there is no likelihood of confusion since the marks sound different and look different, although the Hunter Group’s mark includes a couple of footprints that are somewhat similar to the Iams trademark protected footprint.

Under Section 25 of the Trademark Ordinance, Iams, represented by Dr Shlomo Cohen, filed an Appeal to the Tel Aviv District Court.

The Hunter Group Ltd. Part was represented by Adv. Yossi Bregman (Wolf Goller Bregman) and by my brother Adv. Aharon Factor acting Of Counsel.

Judge Ginat of the Tel Aviv District Court ruled that the issue is likelihood of confusion and the triple test serves as an indication of whether or not there is likelihood of confusion.

Iams considered that their mark was well-known, both in Israel and abroad, and Hunter’s mark was an infringing copy.

Iams tried to show that Hunter’s ‘expert witness’ was merely a local sales representative and no ‘expert’. Judge Ginat retaliated by noting that Iams expert has argued that Eukanuba was used for dog food and IAMS was used for ipkat cat food, whereas in practice it is the other way around.

Although Iams’ well-known mark has been in use since 1980, the paw prints are different. Also, Nestle Purina Petcare Company has a paw print mark 87,529 that was originally owned by Spillers and is also used for pet food in the same class. Their paw print is shown below:

nestle's paw print

When pushed, Iams’ expert acknowledged that Nestle’s mark bore some similarity to theirs, but argued that they weren’t filing suit against Nestle at present. Judge Ginat found it astounding that their expert claimed to be unaware of Nestle’s mark. Particularly as in their statement in the Opposition they claimed that Nestle’s mark was only registered with the Opposer’s consent.

Dr Shlomo Cohen claimed that since the Applicant in that case was the well-known company Nestle, Iams was prepared to allow them to register their mark but this does not confer any rights whatsoever to third parties.

Judge Gilat rejected this. He considered that the very argument countered the requirement of equitable behaviour and Iams are estopped from claiming confusion of the public, since no license was granted by Iams to Nestle, and one can’t selectively apply one’s rights against an insignificant player claiming a likelihood of confusion, whilst ignoring a serious competitor with a large market share.

To support this contention, Judge Ginat quoted Sir Nicolas Browne-Wilkinson V-C in Express Newspapers plc vs. News (UK) LTD, concerning claims and counter claims regarding copyright in articles that

“There is a principle of law of general application that it is not possible to approbate and reprobate. That means that you are not allowed to blow hot and cold in the attitude that you adopt. A man cannot adopt two inconsistent attitudes towards another: he must elect between them and, having elected to adopt one stance, cannot thereafter be permitted to do back and adopt an inconsistent stance”.

In the hearing before the Commissioner, Iams expert witness expressed a certainty that when the products are displayed side by side the consumer (i.e. the purchaser, not the pet) would be misled by the similarity. The Commissioner noted that this was speculative and no evidence was given for this beyond hearsay from store owners. No confused customers came forward to complain. Being unsubstantiated, Judge Ginat felt that the Appellant had failed to show that customers were confused and that their profits had suffered. Although the Opposer to the mark is not required to substantiate these allegations, Judge Ginat noted that it would have been wise to do so.  Furthermore, the marks seems to coexist quite happily in main jurisdictions including IAM’s home country, the USA, and there have been no TM oppositions in any other jurisdiction apart from Israel.

As to the triple test, Judge Ginat noted that in addition to the sight and sound of a mark, and to the goods and channels, the third strand of the five part trilogy was the “common sense test”, and noted that there were significant differences that ruled out customer confusion including the fact that the paw prints were appended by the Thai applicant to the brand name Sleeky. Sleeky sounds COMPLETELY different to both Iams and Eukanuba. The Appellant tried bringing the Supreme Court Decision 3976/10 Akisionerno Droujesto vs. Phillip Morrison to support the contention that there was a likelihood of confusion, but Judge Ginat considered that even accepting the fact the English is a second language and words could be mispronounced, the differences between Sleeky and Iams and Eukanuba were rather more striking than the similarity between Eve and Eva as cigarette brands, and didn’t see that this argument really advanced the appellant’s case.

In conclusion, Judge Ginat upheld the Commissioner’s ruling that the marks could coexistent and that both product lines could be sold side by side as they were worldwide Furthermore, the public interest was served by competition in the pet-food industry. Costs of 10,000 Shekels for legal fees was awarded to The Hunter Group Ltd.

Civil Appeal 3066.09.12 the Iams Company vs. Hunter Group Ltd. Part, re IL TM 190,755 before Judge Ginat of the Tel Aviv District Court, 11 February 2015.

COMMENT

Granted, I don’t purchase cat or dog food and have better English than most Israelis – some of whom have English as only a third language. Nevertheless, it seems clear to me that a paw-print, at best, indicates that the product contains pet food, and is for animal consumption, not human consumption. A paw print is at least strongly indicative that the product is intended for cats and dogs and so interpretation should be narrow and only a very similar footprint should be considered infringing. Two footprints of one form are not confusingly similar to one simplified footprint. With the brand-names clearly shown and so completely different, there is no likelihood of confusion so Judge Ginat is correct. However, no doubt IPKATS and ipdogs ip litigators everywhere will wait with bated breath to see if Iams and their representative appeals this decision to the Israel Supreme Court.

More Paws for thought:

“Pooh looked at his two paws. He knew that one of them was the right, and he knew that when you had decided which one of them was the right, then the other was the left, but he never could remember how to begin”

David said moreover, The LORD that delivered me out of the paw of the lion, and out of the paw of the bear, he will deliver me out of the hand of this Philistine. And Saul said unto David, Go, and the LORD be with thee.”

“Whenever you find yourself on the side of the majority, it is time to pause and reflect.” ― Mark Twain (R.L. Clements)

 

 


The XMultiple

February 11, 2015

XMULTIPLE

XMultiple

Mr Alan Pocrass filed Israel Trademark No. 233310 for the wordmark XMULTIPLE for Electrical, electronic and fiberoptics connectors for data, telephone, cable, television and computers, namely, RJ connectors, coaxial connectors, coaxial and flat-ribbon interconnect systems and ethernet switches; all included in class 9. The application was filed on 27 October 2010 and the Notice of Allowance  published for opposition purposes on 31 May 2011.

Xmultiple Technologies, Inc. opposed the mark. On 11 September 2013, the parties filed a joint request for a specific procedural arrangement under which a scheduled hearing would be canceled and the Commissioner would rule on the evidence and summaries submitted by the parties.

Opposer’s Arguments

XMulptiple Technologies, Inc is a leading Taiwanese manufacturer of industrial electronic equipment that provides components to manufacturers worldwide and including Israel. Since 2002 electronic components have been sold under the XMultiple brand and currently there are more than a million dollars worth of components sold in Israel each year. The director of XMULTIPLE had a business relationship with the Applicant from 1999 but this finished in 2010 and the Applicant owes Opposer some million dollars. The applicant continues to use the mark and to provide customer support to XMULTIPLE products.

The Opposer claimed hat they were the true owner of the mark and that the Applicant had trespassed on their rights by attempting to register the marks in Israel and elsewhere. The Opposer considered the attempt to register the mark was against public order under Section 5(11) and, since it was identified with the Opposer contravened Section 6(11) and was a false indication of origin. The business practices of the Applicant were unfair competition.  The Opposer alleged that the Applicant was selecting inferior goods from other suppliers under the trade name XMULTIPLE . Since the Opposer was called Xmultiple, the Applicant’s branding of their goods as XMULTIPLE contravened Section 12 of the trademark Ordinance. Furthermore, the Opposer claimed that the mark lacked distinctiveness under Section 8(a). Finally, since the marks were used by the Opposer, they could not be registered under Section 11(13).

The Applicant counter-claimed that he had many years of experience in the electronic component industry and that he’d set up an American company called XMULTIPLEtechnologies Inc. In 1999, before the establishment of the Taiwanese company and collaboration between the two companies. The company was set up to market a patented component and the collaboration with the Taiwanese company was to manufacture this patented component.

The parties submitted their arguments, and then the Applicant submitted a Taiwanese ruling from a corresponding proceedings and requested that this should estoppel the Opposer. Because of the territorial aspects of trademarks the Commissioner believed that in general decisions of foreign courts are not given much weight.

The Opposer was unable to show that they had a reputation in the mark in Israel. Despite the business disagreements between the parties, the registration of the mark in the name of the Applicant wasn’t considered as contravening public order. In conclusion,  the Opposition was rejected and the mark was allowed to be registered. The parties were invited to submit their requests for costs.

Comment

The decision is probably a correct one. If the parties had a reasonable written contract between them, it would be easier to ascertain who had better rights to the mark. I note that the Opposer claimed that the mark lacked distinctiveness under Section 8(a). I find it a little amusing that the Opposer argued that the name  XMULTIPLE lacks distinctiveness, whilst simultaneously calling themselves Xmultiple and claiming rights to the mark. In the legal world, these things happen.

 


Follow

Get every new post delivered to your Inbox.

Join 414 other followers