Apparently LRC Products Ltd. (Durex) and Ansell Limited (Life Style) both filed trademarks for condoms that included the work Play.
Durex filed two marks: IL 174678 for the word mark Play, and IL 174730 for the word mark DUREX PLAY.
Life Styles filed application number IL 178348 for Life Style Play, as a graphic mark :
As these marks were all competing marks, as evidenced by the opening line of the decision: “Before me are competing applications”, one would expect that the filing dates and classes were of some importance. Apparently not, since these were not reported in the decision.
For those interested, the word mark application for Play - IL 174678 was filed on 12 September 2004 in class 10 (Medical Devices) for the following list of goods: Condoms; contraceptive, hygienic or prophylactic devices; massage apparatus, instruments and appliances; electric and electronic message apparatus, instruments and appliances; body massagers; personal massagers; vibrators; marital aids; sex aids; parts and fittings for all the aforesaid goods; all included in class 10.
Lifestyle’s mark was filed on 8 February 2005 for condoms in the same class.
Two companies cannot both be awarded the same mark as trade marks are supposed to be indications of origin. Once a mark is awarded to one party, a second party can only register the same mark if the first mark is canceled.
In cases of competing marks, where a second similar mark is filed after a first mark is applied for but before the first mark is allowed, the regulations determine which mark is to be examined, using a first to file principle. The chronological hierarchy is, however tempered by the extent of usage of the mark and by issues of equitable behavior. The law regarding Competing Marks is found in Section 29 of the Trademark Ordinance.
Current Case Law establishes that a mark that is first filed and in use prior to examination, that was applied for without evidence of inequitable behavior, should be examined first. The grounds for deciding are:
- Date of application
- Usage of the mark
- Equitable behavior
Trademark applications are ex partes procedures. Only if and when a mark is allowed, i.e. after the examiner establishes that the mark is sufficiently distinctive from other, earlier marks, and not too generic to be allowed, or with disclaimers for generic elements, etc. the mark publishes for opposition purposes, which is an inter partes procedure where other parties can claim that the mark belongs to them, or is generic, etc.
Judge Gronis ruled in the case of Sabon Shel Paam, that despite the occasional uncomfortable feelings arising from awarding a mark in accordance with trademark regulation 29a, to one party, with the other side losing, such is the nature of trademark rulings. Deciding such cases results in one side winning and the other losing.
Judge Gronis’ decision was cited in the ruling in this case, so was clearly known to the Deputy Commissioner Noach Shalev Shmulovich who ruled in this case.
The situation is that a subsequent filing of a second mark should not prevent the first mark from being examined on its merits. At least so we thought…
Perhaps because they had no grounds under the regulations or the case-law to prevail, Lifestyles, represented by Adv. David Wahlberg, decided to focus their arguments on the substantive issue of whether the word Play could be considered distinctive in the context of condoms and vibrators, etc.
Surprisingly, instead of pointing out that the question of apparent distinctiveness was for examination by the trademark examiner and, if necessary, for appealing in an opposition proceedings, having decided which mark should be examined, the Deputy Commissioner, Noach Shalev Shmulovich decided to relate to that issue, ignoring the legal issue before him.
There is some precedence for so doing, e.g. the Eshel decision, where both Tnuva and Yotvata filed marks for the word eshel, seen as generic for the product - a sort of fromage frais.
Nevertheless, in a later decision, relating to the issue of “Kochav Nolad” (literally A Star is Born), it was clearly stated that in cases of competing marks, the registerability of the mark is not an issue, merely which party is considered as taking precedence.
Shmulovich hypothesized that the examiner would probably have ruled that the term Play was too broad and would have rejected the word mark Play and accepted the Durex Play mark with a disclaimer from the word play, leaving the way open to Lifestyles to then have their mark examined. He therefore refused IL 174678 and allowed both IL17430 and IL 178348.
In other words, both Durex and Lifestyle can continue to sell condoms under the name Life, provided that the manufacturer continues to be clearly indicated.
To add insult to injury, Shmulovich awarded costs to Lifestyle as he’d cancelled the simple Play mark applied for by Durex. But if no opposition was filed, why should Lifestyle receive costs?
The fact that a product has historically been sold by line name and brand name together, should not necessarily be taken as sufficient to prevent the line name from being registered. At least not whilst the patent office is allowing such secondary marks to be registered and generating a not inconsiderable income whilst so doing.
If sexual intercourse with condoms is considered as playing, the term Play may be too generic to be registered for condoms in and of itself. So be it. That decision is separate from the issue of that of competing marks.
Publishing decisions should help clarify the law and create a corpus of case-law that makes clear what the relevant considerations are. This decision contradicts earlier rulings and seems to clarify that there are no rules and no guidelines.
Could be worse though. Following the decision in Hamastan to not allow trademarks to be registered for alcoholic drinks, the trademark office could have taken a tough approach against birth control, particularly condoms which have been particularly frowned upon by the Rabbis, and prevented registration on morality grounds.
Posted by Michael Factor 
