Alpha Dent Implants

April 26, 2015

Alpha Dent Implants        caps

Background

Boris Simnovsky attempted to file Israel Trademark Application Number 243663 for “Alpha Dent Implants”.

Alpha Bio-Tech LTD successfully opposed the registration, presumably on grounds of Alpha being laudatory, Dent Implants being descriptive, and the combined mark being  providing a likelihood of confusion with Alpha Biotech as to the origin of the goods.

The Opposer requested costs of $5694 so The Commissioner, Asa Kling, related to the items in the list for costs in dollars as well, whilst noting his disapproval that the costs were not submitted in Shekels which is the currency that they should be billed and settled in Israel.

Alpha Bio-Tech LTD opposed the mark On 25 December 2013, the sides filed their statements and counter-statements and on 9 July 2014, after the period for filing evidence had passed, The Applicant, Boris Simnovsky, requested to withdraw the mark without a decision on costs, as he had “lost special interest in the Israel market”, and was no longer interested in the mark.

On 14 July 2014, Commissioner Kling ordered the mark withdrawn and the proceedings closed, but gave both sides the opportunity to file for costs, and on 14 September 2014, Alpha Bio-Tech LTD applied for costs.

 

Ruling

A party that gives up during contentious proceedings such as an opposition is considered as losing, see Israel TM 171160 “Pine” in KT&G Corporation vs. Dunhill Tobacco of London LTD, and Israel TM 156955 Avon Products vs. Dean L. Rhoades. The Arbitrator of TM proceedings has the authority to rule costs from Section 69 of the Trademark Ordinance 1972. When ruling on actual costs, the adjudicator is required to determine if the costs claimed are reasonable, proportional and were incurred by necessity, See Basgatz 891/05 Tnuva vs. Input Authority P.D. 60(1) p. 600-615, Nevo 30 June 2005. The relevant considerations are the legal and factual complexity of the file, the amount of work done, especially in filings to the court, the behavior of the parties with respect to each other and to the patent office, equitable behaviour, etc.

As ruled in Tnuva Section 25, the parties must detail the basis of charges and the work done, and whether these were actually collected, and then the onus moves to the loser to explain why such costs should not be paid.

The Opposer’s costs of $5694 consisted of $1298 for preparing and filing the statement of opposition including official fees, $2926 for preparing evidence and $1500 for preparing the petition of costs.

The first two actions were supported by an affidavit and receipts but the charges were the charges were global and not itemized. There was no support for the final charge, and there was not even a framework agreement with the client to do this work.

The Opposer claimed that the applicant did not submit papers in a proper manner which resulted in additional work being incurred. Furthermore, the applicant requested that the opposer withdraw the last submission and the applicant would pay $4000, but this attempt to reduce expenses was unsuccessful.

The Commissioner accepted the Applicant’s allegations that the request for costs was laconic, but did not consider that the Opposer was therefore not entitled to reasonable costs and therefore decided to rule by thumb estimation based on the actual submissions.

After relating to all the relevant considerations (but at least as laconically as the Opposer) the Commissioner ruled total costs of 18000 Shekels ($4500).

Ruling of costs awarded to Alpha Bio-Tech LTD for successfully opposing Israel Trademark 243663 “Alpha Dent Implants” to Boris Simnovsky, costs awarded by Asa Kling 15 March 2015.


Israel Patent Office Circular on 3D Trademarks

March 18, 2015

The Israel Patent Law 1967 is unequivocal in that three dimensional trademarks are registerable.

In the past, attempts to register the shape of objects and containers as trademarks was frowned upon by the Israel Patent and Trademark Office. Then, in 11487/03 August Storck KG vs. Alfa Intuit Food Products LTD, the Supreme Court ruled that the shape of the distinctive Toffiffee toffee and chocolate coated hazelnut snack could be registered as a design.

Since then, there have been a number of rulings (for and against) concerning trademark applications for  distinctive packaging, particularly for liquor and perfume bottles, and for various other objects such as Rubik’s cube.

The Israel Patent Office has now published a Commissioner’s Circular (no 032/2015) that attempts to provide clarity to this issue.

Essentially, three dimensional packaging or product shape should be protected with design registrations.

Consequently, inherent distinctiveness is insufficient grounds for registration.  However:

  1. if the three dimensional image serves as a trademark,
  2. is not significantly aesthetic or functional, and,
  3. through use, has acquired distinctiveness, it may be registered.

Since trademark registration does not provide protection to different elements of a composite mark, if a three dimensional representation includes the company’s name prominently, this may be used to enable registration without consideration of the three requirements above.

If allowable, the fact that the image is three dimensional will be stated.

The Circular comes into immediate effect and cancels previous circular MN 61, from 29 April 2008.

COMMENT

As guidelines, these are very sensible. However, one imagines there will be lots of arguments as to whether in specific cases, a three dimensional image serves as a trademark or not. Whether something is ‘significantly aesthetic or functional’ leaves a lot of grey areas, and the concept of acquired distinctiveness is also a difficult issue to quantify.

Substantially functional marks are related to in a decision concerning rifle sights. In a controversial ruling, the Rubik Cube was registered. In another ruling that I was less than happy with, the Crocs beach clog was registered.

Many rulings relate to bottle designs. For example the Kremlyovskaya vodka bottleEnergy Brands, Contreau, Fanta and Absolut Vodka. Also see here. Rulings for other containers include one for a cigarette box.

I suspect that we haven’t heard the last word on this subject.


B144.co.il vs New 144 on Competing Marks, distinctiveness of a number and cybersquatting

March 12, 2015

Directory Inquiries for Bezeq, Israel’s historic telephone service was reached by dialing 144. Since the mobile phone and fiber-optic cable revolution, there are now lots of competing cellular and satellite phone providers and cable entertainment networks also provide phone services. Each supplier has its own directory inquiries, and dedicated websites.

On 3 April 2012, Mr Yossi Lotem filed a trademark for New144, for advertising, business administration business services, office services and shops in Class 35.

On 22 July 2012, Bezeq Israel Telecommunications LTD submitted a number of trademarks for stylized logos for b144.co.il, which is the Internet address of their online telephone directory website. The marks were submitted for Computer applications, electronic indexes, Mobile phone applications, Internet Applications, digital databases, directories and different services in Class 9, for managing databases, publicity, providing business services, business consultancy, office services and business databases in class 35, for telecommunications, communications, providing communication services,

The various logos included different slogans “all businesses in one website”, “helps you to chose”, and “All business and all people in one website”

b144.co.il   b144.co.il1  b144.co.il2

The patent office considered the marks as confusingly similar and as the parties were unable to come to an understanding, a competing marks proceeding was initiated.

In addition to competing marks, this ruling relates to procedural issues, fighting trademark battles without legal representation, inequitable behavior and cybersquatting. It also touches on whether numbers alone are registerable.

Lotem submitted his affidavit requesting examination on the merits. Bezeq submitted a statement from their Head of Information Marketing and Databases. It transpired that both parties have been providing internet publicity services, creating mini-websites for companies together with contact details.

Originally Lotem was represented, but his counsel requested to be released from his obligations with client’s consent, and so Lotem was cross-examined without representation.

The parties filed summaries and responses to the summary. Before ruling on the main competing marks issue, the Deputy Commissioner, Ms Jacqueline Bracha addressed a request by Bezeq for various parts of Lotem’s summary to be struck from the record as being an inadmissible widening of issues under discussion.

The admissibility of evidence and new claims in summations 

Bezeq claimed that the material related to new issues raised without submitting evidence and so should be considered invalid. Some was hearsay, and some was irrelevant. Lotem claimed that the material was with his counsel and he only learned about them late in the proceedings, but the material related directly to whether Bezeq had rights in 144. The legal issue was essentially whether in a competing marks ruling, evidence regarding the cancellation of a mark could be submitted.

Lotem did not accept that this was new material that went beyond issues discussed in his statement and that of Bezeq’s witness. Bezeq argued that they could not relate to the issues as they weren’t submitted at the proper time and in the proper manner. The information that Lotem wished to submit related to regulatory rulings concerning Bezeq’s activities that were designed to limit their monopoly and Lotem further noted that attempts by Bezeq to obtain a trademark for the number 144 alone were rejected. Lotem’s case wasn’t helped by him submitting statements headed as “affidavit” and ‘legalized’ by his nephew rather than by a lawyer.

In her ruling, the Deputy Commissioner Ms Jacqueline Bracha noted that the alleged inequitable behavior of Bezeq in using the requested trademark was not raised as an issue at the proper time and evidence was submitted after the evidence stage was completed. Furthermore, the additional material was not submitted by requesting late submission with appropriate justification, but was slipped into the conclusions without prior approval from the patent office.

Lotem’s excuse was that he was not represented and was not familiar with procedural issues. Furthermore, the procedural laws for civil procedures 1984 are not actually binding on the patent office. Ms Bracha acknowledged that the laws regarding widening the legal issues at late stages of a proceeding were court procedures, but ruled that they were generally applicable to patent office proceedings with modifications as necessary. Support was given (or at least reference was made to earlier decisions) from 147565 Orbotech vs. Camtek and from TM 158670 ruling concerning deletion of evidence re On line Marketing LTD. vs. Yoval Gorali et al.

In competing marks proceedings, traditionally the parties submit their evidence but do not submit statements of case. In a Circular from commissioner 013/2012 in addition to presenting evidence, the parties are cross-examined and may request permission to file contrary evidence. In this case such a request was not made.

MS Bracha noted that competing marks proceedings are adversarial and so each side should have an opportunity to present evidence and to challenge each other’s evidence. A corollary of this is that one cannot allow one side to submit new evidence late in the proceedings if the other side disagrees. Consequently, she ruled that Lotem cannot submit this new evidence at this stage. Sections 18-32, 24-37 of Lotem’s summary and appendices 5, 6, 7 and 9 are struck from the record as are sections 8, 10 and12 and appendices 1-5 of the response Lotem made to Bezeq’s summary.

Which mark should be preferred? 

Substantively, in competing marks proceedings the issues include who filed first, but more importantly, the issue of extent of use and and equitable behavior is considered.

Lotem filed 3 1/2 months before Bezeq but this is considered insignificant. Indeed, Bezeq has other marks for “b144″ and for “b144.co.il all businesses” that predated Lotem’s filings. Lotem showed that he’s filed a trademark for new144.co.il in 2010, and, between 2019 and 2014 had invested 200,000 Shekels in the project.  By 2014 he’d accumulated 40 clients and was making up to 20000 Shekels a month.

Bezeq started using the b144 and “b144.co.il all people. All professions” marks in question in 2010 and had some use of b144 since 2007 on Bezeq’s website.  Over the period from January 2008to 2013 Bezeq’ website was receiving 203 million hits a month with significant advertising revenue. Furthermore, Bezeq’s marks include b144 as a dominant element.

Ms Bracha ruled that the issue of whether 144 is a well known mark or indeed registerable is irrelevant and concluded that Berzeq had adequately shown more significant usage than Lotem.

As to equitable behavior, Ms Bracha accepted that this was critical in this instance, but did not see how Bezeq, with usage of b144 from 2007 could be accused of aping Lotem.

Lotem had used the website Israeli-business but decided that it was too long and then purchased new 144 after seeking professional advice and learning that the word new was desirable. Lotem originally denied being familiar with Bezeq’s website before filing his domain request in 2009 and only discovered it when Israeli-business appeared on Bezeq’s website. He argued that he did not request the website and that it was opened automatically when he purchased a business line.  However, Bezeq showed that the entry on Bezeq’s directory included a description of his services that Lotem himself had written and then he admitted having some prior knowledge of b144.co.il and of b144.

Additionally, Lotem was using the slogan “all businesses all professions” in a manner that was also more than reminiscent of Bezeq’s website. Bezeeq claimed that this was hardly coincidental. Lotem countered that unlike Bezeq he was not providing personal contact data for individuals but only business data and that the slogan “all businesses all professions” and variations thereof were widely used by other information providers and this was descriptive or his services, and there were only so many ways of describing such services.

Lotem argued that he wanted to use the word “new” and 144 was chosen as it is easily remembered. When asked what the number signified, he responded that it was an integer between 143 and 145.

The Deputy Commissioner accepted that this was a random number between 143 and 145 but noted that Lotem referred to his mark as new one four four and not as new one-hundred-and-forty-four, indicating that the subconscious motivation behind the random selection appeared to be the dial up number of Bezeq, since phone numbers are usually remembered as strings of single digits. Consequently the Deputy Comissioner ruled that in addition to scale of use, in terms of equitable behaviour Bezeq had a stronger case.

Lotem suggested coexistence under Section 30. MS Bracha ruled that coexistence in the same class required equitable behavior of both parties and was not convinced that Lotem had behaved equitably. Furthermore, the differences between clientele were not real differences. Both parties were providing business card type mini-websites to clients which was the same service. Consequently, she ruled that coexistence was inappropriate. Lotem mark was refused and Bezeq’s marks were allowed to continue for examination.

Lotem was ordered to pay 2000 Shekels in legal fees and 12000 Shekels in costs to Bezeq.

COMMENTS

This decision is more than reasonable. Since Bezeq’s monopoly was destroyed other parties can provide telephony services and Lotem can certainly provide a business directory and min-websites. The issue here is one of the choice of name. Lotem is a cybersquatter.

Numbers per se. are not considered distinctive and cannot be registered as trademarks. Intel called their fifth generation processors Pentium since despite the success of 286, 286 an 486 series PCs that revolutionized the personal computer industry, they did not have rights to the number.

In June 1994 Brian Lara scored 501 runs for Warwickshire against Durham setting a new world cricketing record. The clothing company that Lara was contracted to could have celebrated by issuing a celebratory 501 jeans. They didn’t as Levi-Strauss’ 501 design is so well known.

One is generally not advised to fight companies such as Bezeq without legal representation. Lotem’s arguments for the slogan were reasonable. Arguing that 144 was selected randomly from the numbers between 143 and 145 was not such a good idea.

Bezeq should approach ICANN to have the new144 website taken down. One cannot claim distinctiveness for adding the word new.


GHI – Can a mark be cancelled for non-use if the non-use was the result of opposition proceedings?

March 11, 2015
Gemstones...

Gemstones…

Sections 39 of the Israel Trademark Ordinance allows trademarks to be opposed for various grounds. Section 41 of the Israel Trademark Ordinance legislates that trademarks may be cancelled due to lack of use. This decision relates to the issue of whether a mark that is not in use allegedly due to an ongoing opposition to its registration can be cancelled as a result of the lack of use

Gemology Headquarters International LLC registered Israel trademarks 187385 and 187386 for the letters GHI in December 2007. The marks cover gemological services such as identification, authentication and ranking of diamonds, precious stones and for providing certification of precious metals, diamonds, gemstones and pearls in classes 42 and 16.

Under Section 41 of the Trademark Regulations, in December 2011 the Gemology Institute of America Inc. filed cancellation proceedings alleging that the marks weren’t in use.

The cancellation proceeding was filed whilst the same parties were fighting an ongoing opposition proceeding against the marks under Section 39 that claimed unfair competition and that that marks were not-registerable. That proceeding was combined with another opposition relating to stylized trademark numbers 200701 and 200702 for GHI. Those oppositions were eventually rejected and the marks were considered registerable. However, before the ruling, the Opposer filed to cancel the marks on grounds of lack of use, arguing that they could not initiate cancellation proceedings earlier as the minimum period of three years of lack of use hadn’t occurred when the mark was opposition proceedings was filed.

Evidence for and against the alleged lack of use included statements by the management of the two companies and also an affidavit by a private detective.

Section 41 states:

[a] Without prejudice to the generality of the provision of sections 38 to 40, application for the cancellation of the Registration of a trade markregarding some or all of the goods or classes of goods in respect of which a trade mark is registered (hereinafter – goods regarding which the cancellation is requested) may be made by any person interested on the ground that there was no bona fide intention to use the trade mark in connection with the goods for which it is registered in connection with the goods regarding which there is a request to cancel the registration and that there has in fact been no bona fide use of the trade mark in connection with those goods in connection with the goods regarding which there is a request to cancel the registration, or that there had not been any such use during the three years preceding the application for cancellation. 

[b] The provisions of subsection (a) shall not apply where it is proved that the non-use is due to special circumstances in the trade and not to any intention not to use, or to abandon, the mark in respect of the said goods. 

[c] For the purpose of this section, there shall be deemed not to have been bona fide use of the trade mark in the event of any of the following: (1) use of the trade mark in Israel in advertising only whether in the local press or in foreign newspapers reaching Israel unless there are special circumstances which in the opinion of the Court or the Register justify the non-use of the mark on goods manufactured or sold in Israel. (2) cancellation of an authorisation to use the mark given to a manufacturer in Israel under section 50 unless the authorisation is cancelled following an infringement of conditions or because the person who gave the authorisation intends himself to manufacture the goods for which the mark is to be used or to grant the authorisation to another manufacturer in Israel. 

[d] Application for cancellation may be made in the prescribed manner either to the Supreme Court or, at the option of the applicant, may be made in the first instance to the Registrar. 

[e] The Registrar may at any stage of the proceedings refer the application to the Supreme Court, or he may, after hearing the parties, determine the question between them subject to appeal to the Supreme Court.

[f] in this section, “use” of a trade mark shall include [1] use of a registered trade mark by its proprietor or by an authorized person under section 50 in a manner that differs from that noted on the register in such a way as not to change the distinct character of the mark as it is registered; [2] use by an authorized person under section 50 on condition that such use is subject to the control of the proprietor of the mark.

 The Mark holder first tried to get the proceedings dismissed on grounds that cancellation due to lack of use can only be initiated by an “interested party” and that the Opposer does not fall into this category. The Commissioner of Patents and Trademarks ruled against throwing the request out and decided that the issue would be judged on its merits. Then, based on a close reading of Section 41a and 41b and the case law, the Commissioner ruled that a mark not in use should be cancelled unless extraordinary justification for lack of use is given, and that such extraordinary justification should be more than simply the business considerations of the parties concerned. Accepting such an extraordinary justification was the prerogative of the commissioner who did not feel that it was warranted in this case.

Legal Arguments for not throwing the case out due to lack of standing

In an Appeal to the Supreme Court from 1971, (67/71 “Pharmo LTD vs. the Commissioner of Patents and Trademarks P.D. 28(1) 802, 8/6/71, Judge Vitcon addressed the issue of interested parties by contrasting with the term “injured party” as it appears in Section 38. The Israel Law does not relate to injured parties, but to ‘interested parties” and even the more limited term “injured parties” has been interpreted broadly in the English rulings, such that one can generally assume that parties requesting cancellation of a mark have standing. Even if one disputes the general applicability of Pharmo, in 144/85 Klil vs. Commissioner of Patents and Trademarks PD 42 (1) 309 a similar conclusion was reached, i.e. that interested parties are not just aggrieved parties.

In the present case, the requester for cancellation is anyway an aggrieved party, in that he opposed registration on grounds of unfair competition. Consequently, even if one holds that the term interested party should be considered narrowly, the requester for cancellation fulfils the requirements and has standing. Even though the Requester for cancellation is at a disadvantage having lost the opposition, he nevertheless has standing which is considered in Klil to be a basic constitutional right and has the right to request cancellation. Thus, even if not considered an injured party, he may be considered an interested party, and the change of terminology indicates that the two groups are different and the interested party is wider than an injured party.

Anyway, in Appeal 2209/08 Gigiesse Confezioni S.P.A. vs. Amphom, it was stated that Section 41 is to prevent defensive registrations and to keep the maintain the integrity of the register. Where the claim is lack of use, this is precisely what Section 41 is for. Furthermore, the Commissioner should take into account public interest and clearly the Requester for cancellation has at least the standing of disinterested parties. In this regard, even were the request to be filed and then dropped, the Commissioner would have a duty to examine the evidence and to consider canceling the mark due to lack of use.

 

Legal arguments on the merits for not considering this instance as an exception justifying lack of use.

From Bagatz 302/84 Nicholas it is clear that 41a states that lack of actual use is a basis for cancellation and under certain circumstances 41b allows intent to use to be considered as a defense against cancellation. In other words, the first thing to be considered is whether there is use, and if not, the mark should be considered voidable unless a good reason for lack of actual use is brought, in which case the mark may be maintained at the Commissioner’s discretion.

In this instance there is consensus that the mark was not in use, and the question is simply whether the Commissioner is persuaded that the lack of use is justified in the circumstances.

Citing 95/54 Chanel vs. Commissioner, the term extenuating circumstances is understood to be something general and not company specific.

Nicholas and Mig both give guidelines for extenuating circumstances.

GHI claim an intent to use the mark as their world wide branding apart from in US where EGL is used. GHI further claim actual use in India and the fact that they are fighting for the TM in China, Canada, Israel and Hong Kong is, itself proof of intent to use. That as may be, apart from in India, GHI have postponed launching the mark.

Without wishing to nail the lid down, the Commissioner was not convinced that legal battles constitutes proof of intent to use. The investment in a laboratory is not considered evidence of proof to use the mark, only of investment to provide services, which could be provided under a different mark. In addition to not using the GHI mark, there is a further mark GIH, also not in use. When this was opposed, the mark owner did not show actual use.

Whatever the reason, the mark owner has not actually used the mark and the Supreme Court has already ruled that not using the mark for defensive reasons is not sufficient to maintain the registration.

The mark owner is entitled to weigh up the pros and cons of using a challenged mark, but if he decides not to use it, he cannot then object to cancellation due to lack of use. There are insufficient grounds to justify an exception under 41b and the Commissioner therefore declined to use his prerogative to maintain the mark under 41b.

The commissioner considered the case to be analogous to Amphom and, like Judge Danziger, held that the mark was void through lack of use.

Cancellation Ruling re GHI, Asa Kling 2 February 2015


Dagesh – The emphasis on coexistence

March 10, 2015

Dagesh assistive technologies
The word ‘dagesh’ means emphasis. It is used particularly to denote a dot that is added to letters of printed Hebrew text to add stress. The letter Bet with a dagesh is pronounced Buh and without a dagesh as Vuh. The letter kaf is a kuh sound, and a gutteral chu sound as in Chanuka without a dagesh. Yemenite Jews differentiate between hard and soft Gimels and have a j sound as in giraffe. (An early multilingual Windows based word-processor was developed in Israel some years ago and sold under the brand Accent. The Hebrew-English version was marketed as Dagesh).

In 2012, Israel trademark application number 243617 was filed for “Dagesh Assistive Technologies”. The mark is shown above.
The application covers accessories or equipment intended to improve the functioning and the ability of people with disabilities, namely, computers; arms and mountings; peripheral equipment for computers such as keyboards, keyboard replacements, mice, mouse replacement, joysticks, switches and trackballs; teaching aids; augmentative and alternative communication and computerized communication system, namely, devices intended to improve communication of people with speech disabilities and other disabilities; devices for recording, transmission or restoration of voice; accessible toys and accessible leisure facilities; accessories or equipment intended to improve the functioning and the ability of people with disabilities; all for people with special needs and the population of special education, including people with physical disabilities( e,g with impaired vision or hearing) and/or mental disabilities and/or learning disabilities or developmental difficulties; all included in class 9, sale of computers , peripheral equipment, communication systems and augmentative and alternative communication system (AAC); all included in class 35. Lending of communication systems and augmentative and alternative communication systems (AAC); all included in class 38; training and services for special education students. consulting and adjusting accessibility to population with special needs; all included in class 41 and Lending of computers and peripheral equipment for computes; technical support provided to population with special needs with regard to technical aids and special instrument designated to such population; design and development of computer software in collaboration with para-medical experts for population with special needs; all included in class 42.
A second Israel trademark application number 260864 for the same mark covers adapted toys for children with special needs and recreation adapted facilities for population with special needs.in class 28, and for Providing treatment and solutions for populations with special needs with motor disabilities with the assistance of measures and paramedical experts: speech therapists; occupational therapists; Physiotherapists; art therapists in class 44.

Dagesh Hadracha
Meanwhile, Rivka Zadick filed Israel trademark application number 243484 for “Dagesh the center for therapy and training” which provides Diagnosis, and treatment of diseases and disorders of physical or cognitive disabilities for children; occupational therapy services; speech therapy, music therapy; art therapy; physical therapy; sport therapy; all included in class 44.
The dominant word element in each mark is the word Dagesh. The services provided are somewhat related which results in a similar customer base.
Because of the similarities between these co-pending marks, the Israel Trademark Office instituted a competing marks proceeding. However, the parties agreed to co-existence with minor amendments to the list of goods, and requested that the Israel Trademark Office ratify the agreement.
Since the marks are stylized and the logos are very different, the adjudicator of Intellectual Property, Ms Shoshani Caspi was happy to allow both marks to register as she did not think that this would create a likelihood of confusion among the public. The three marks have thus progressed to publication for opposition purposes and, unless there are third party oppositions, will be allowed to coexist.

In the circumstances, no costs were awarded.

RE Israel Trademarks 243617, 260864 and 243484 for Dagesh, coexistence ruling by Ms Shoshani Caspi, 8 February 2015.


March 8, 2015

Reporter

“I see nobody on the road”, said Alice.
“I only wish I had such eyes,” the King remarked in a fretful tone. “To be able to see Nobody! And at the distance too! Why, it’s as much as I can do to see real people, by this light!”
Through the Looking Glass, Lewis Carrol

Fin. Ing S.R.L. owns Israel Trademark Number 207810 for Reporter as shown above. The mark covers clothing, footwear, headgear; all included in class 25.
On 19 August 2014, Richemont Internationals S. A. filed a cancellation proceedings claiming a lack of use during the three previous years. Fin. Ing. S.R.L. did not file a counter statement of case, and so Richemont Internationals S. A. filed their evidence which Fin. Ing. again ignored.
On 24 December 2014, Richemont Internationals S. A. requested that the Patent and Trademark Office issue a ruling based on the material on file, without a hearing. Richemont Internationals S. A. admitted that the their interest in cancelling Fin. Ing.’s mark was due to their trademark application being refused.
Richemont International’s evidence included a notarized statement from their lawyer in Switzerland, that, following investigations, to the best of their knowledge, the mark owners had not used the mark in Israel within at least the previous three years within the class under which the goods were registered, or for clothing, footwear or headgear at all.
Ruling
Under Section 41, any third party can request cancellation of a trademark on the ground that there was no intention to use the mark or that it had not been used within three years.
Trademarks are considered property rights to all intents and purposes and these rights should not be easily abrogated. Consequently, the burden of proof of lack of use rests squarely on the challenger. The challenger can submit his evidence, and then the burden of proof switches to the trademark owner, and the burden switches back and forth.
When considering use of a mark, the usage may be minimal (see Amir Friedman Trademarks, Law, Rulings and Comparative Law, Ferlstein 3rd Edition, p.p. 488-489), see also the trademark ruling concerning 14630 and 13296 “DIVA”.
In this instance, there is an objective problem to show lack of use, since the affidavit of the Swiss lawyer was written by a foreign national relying on inquiries made locally that were not specified. The identities of the private investigators used, their activities and the dates that these took place were not detailed. Statements of the private investigators themselves should have been submitted. Thus the cancellation request was rejected as insufficiently substantiated.
Ms Shoshani-Caspi noted that the cancellation proceedings were unchallenged, but considered that the mark holder was required to defend himself from fairly based challenges, and, where insufficient evidence of non-use is submitted, the mark remains unscathed. This finding is in accordance with Section 71a of the trademark regulations 1940 that state that if the mark ruler ignores a cancellation request under section 70 and does not respond within two months, the Commissioner will alert the mark holder and give him two months to respond. If the requester for cancellation submits evidence, the Commissioner will give him an opportunity to present his case and will only cancel the mark if convinced that it is correct to do so.
Not finding the evidence convincing, Ms Shoshani Caspi ruled that she could simply ignore the request for cancellation. Nevertheless, since the mark holder had not done anything to protect the mark, she gave the representative of the mark holder until 22 February 2015 to choose between cancelling the mark and respond showing use.
The initiator of the cancellation proceedings was given until 5 March 2015 to present more convincing evidence and following this, a ruling would be given.
No costs were awarded.
Ruling concerning cancellation of Israel Trademark Number 207810 for Reporter, the mark owned by Fin. Ing S.R.L. and challenged by Richemont Internationals S. A. Ruling of 5 February 2015.

COMMENTS
Ms Yaara-Shoshani-Caspi is well within her rights to argue that the initiator of the cancellation proceedings had not established that the mark was not being used. The problem is that whereas it is possible to provide evidence of use, one cannot actually provide evidence of non-use.

That is, of course, the purpose behind the quote from Through the Looking Glass at the beginning of this post.

Richemont are represented by Eitan Mehulal who seem to have been unable to win an uncontested proceeding. Meanwhile, Reinhold Cohen was the agent of record who was obliged by the adjudicator to get a decision from their client, appears to have now been replaced by Colb. Go figure.


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.

 


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