Is Leapfrog trying to jump ahead at Sony’s expense?

September 18, 2014

Sonicgear

Leapfrog Distribution PTE LTD filed Israel trademark application No. 240389 for SONICGEAR.

The application covers “Audio devices, including but not limited to: speakers, multimedia sound systems, docking stations, radios, radio clocks, portable multimedia devices, headphones, headsets, microphones, earphones, audio cables and accessories; all in class 9.

On the mark being published for opposition purposes on 31 October 2012, the Sony Corporation filed an opposition.

Sony frog

Sony’s claims

Sony claimed to be a world leading brand of electronic goods including video game consoles and telecommunication equipment with worldwide reputation, including Israel, with a range of branded products that are identified with Sony. Since the company name Sony is well established, it may considered a Well Known Brand and is entitled to wide protection.

According to the Opposer, there is a similarity between the Applicant’s mark and their name, both phonetically and visually, and so the mark lacks distinctiveness in contradistinction to Section 8a of the Trademark Ordinance.

The Opposer (Sony) claims that a connection between the Applicant’s mark and their own will damage the reputation of years and cause a dilution of Sony’s name. Sony accused Leapfrog of trying to free ride on Sony’s long established reputation which is the result of years of cultivation, and so claims that the registration of the mark is inequitable behaviour and contrary to the public good.

Leapfrog’s claims

Leapfrog was established in 1999 and has sold electronics under the name SONICGEAR for more than a decade. SONICGEAR’s goods have been sold in Israel since 2006. The requested mark has been in use in Israel since 2008 and has developed its own reputation.

Leapfrog denies a likelihood of confusion since both Sony and Sonicgear have developed their reputations over years. Leapfrog claims that Sony has lived with their use of the SONICGEAR branding for years and are thus estoppeled from opposing it, and their opposing it now is itself inequitable behaviour.

Evidence

Leapfrog further claims that the marks look and sound different and that there are very many marks that start with the prefix SON in Class 9 of the Trademark Ordinance.

SONY submitted an affidavit of the Head of Trademarks at SONY that shows the rating of the SONY mark in Japan, examples of branding publicity for Sony in Israel and lists of SONY’s trademark registrations around the world.

Leapfrog filed an affidavit of their CEO showing sales of the SONICGEAR brand over the previous five years and examples of their trademark registrations.

Both sides gave up on the right to cross-examine.

Ruling

Citing Supreme Court precedents, Deputy Commissioner Jacqueline Bracha ruled that where the parties agree to accept testimony without cross-examination this adversely affects their rights to challenge the facts presented in the testimony but this does not bind the court to accept the affidavits at face value.

In this instance, the two affidavits may be used to build a picture of the relative usages but the court has to bear in mind that the affidavits were not challenged.

As to the Opposer’s challenge to the distinctive nature of the mark, Section 8a states that a mark cannot be registered unless it may be used to distinguish between the goods of the registrant and those of competitors. Ms Bracha ruled that the purpose of the Section is to prevent parties from monopolizing generic words. She considers that the distinguishing features of a mark have to be considered by looking at the mark in isolation, without considering competing marks. The issue is whether the mark is descriptive or laudatory, not whether it is confusingly similar to other marks.

Consequently, Ms Bracha ruled that better grounds of opposition might be 11(9) or 11(13) as Sony’s marks are registered and they are claiming a likelihood of confusion.

She went on to apply the triple test and ruled that the as far as the appearance and sound of the mark were concerned, the marks should be considered in their entirety and not broken down into syllables or parts. SONICGEAR does not look or sound like SONY. The mark is also stylized with distinctive graphic elements.

The prefix sonic implies audio and is thus generic descriptive, and not fairly monopolizable by Sony. She noted that it was true that many other firms were actively using marks starting with or including ‘son’, but did not consider this as being grounds for registration per se. Nevertheless, since other players were using the syllable / sound, it weakened Sony’s argument that there was a likelihood of confusion.

The hard G in the middle of Gear is audibly dominant. Furthermore, as a stylized ON-OFF button, it is graphically distinct. She then went on to cite the Appeal of the Killy – Killa decision (considered by former Commissioner Dr Noam as confusingly similar, but overturned by Judge Ginat of the Tel Aviv District Court).

As far as the clientele is concerned, there is certainly overlap but Ms Bracha did not consider that there was a likelihood of confusion, and certainly no evidence of their being a likelihood of confusion was submitted.

Under other considerations and common sense, MS Bracha accepted that the prefix Son was not distinctive and noted that Leapfrog also had a second stylized mark Powerlogic where the Os were jack-plugs similar to the C of Sonicgear, and this strengthened the identity of the mark with Leapfrog’s.

As to Sony being a well-known mark, Ms Bracha accepted this, but explained that the significance of this is covered by Section 11(14) of the Trademark Ordinance, i.e. that an identical or confusingly similar mark could not be registered in a different class if this could create a likelihood of confusion. In this case, since she had concluded that the marks were not confusingly similar, the issue was moot.

In terms of unfair competition, Ms Bracha ruled that merely establishing that a competing mark is wel known is insufficient. A likelihood of confusion is also required and no evidence of this was submitted.

The grounds of Public Interest were considered not relevant, since these were limited to marks that were widely considered offensive, and that wasn’t the case here. As to inequitable behaviour, Ms Bracha referred to the Pioneer decision instead of repeating it again, and also noted that although alleged, no evidence was submitted.

The Opposition was refused and Ms Bracha awarded the Applicant 2000 Shekels costs and 13,000 Shekels + VAT in legal fees.

Ruling: Opposition to Israel Trademark 240489 “Sonicgear”, Sony vs. Leapfrog Ms Jaqueline Bracha, 10 August 2014.

Comments

This was a well-reasoned response. That cannot be said of the Opposition as filed.

If the Opposer chooses to oppose a mark based on one legal argument and is unable to prove his case since the legal basis chosen was wrong, why should the Patent Office raise legal issues such as Section 11 which were not raised? After all, an Examiner had already decided that the existence of Sony’s marks were insufficient to prevent registration and Sony (via their Counsel, Dr Shlomo Cohen, Law Offices) did not challenge this under Section 11.

The Chinese do seem to often choose marks that are at least reminiscent of and perhaps inspired by brand-leaders. Sonicgear is somewhat reminiscent of Sony and of Panasonic, and this case reminds me of the Lovol – Volvo decision.


Competing Marks – the extent of Power Of Attorney and submitting summaries in writing

September 9, 2014

The cook store 253157

In my previous post I noted that Gornitzky and Partners, Attorneys-at-Law, seem snowed under and unable to help their client, Surprise Import & Marketing of Gifts Ltd ward off an attack on the validity of their trademark in a timely manner. Well, amongst other time-consuming activities, it seems that they and the client have also got caught up in a competing marks proceedings.

The mark in question, Israel TM No.253157 “The Cook Store” in classes 8 Tools and work hand-operated; cutlery; razors, In respect of devices for lighting, hitting (heating?) extracting streams (steam?), cooking, cooling, drying, airing, supplying water, and sanitarian (sanitation?) purposes in class 11, Tools and Household or kitchen containers, combs and sponges, brushes (except paint brushes detergents), items for cleaning, glassware, porcelain and earthenware not included in other classes, in class 21.

The Cook Store

The mark was filed at around the same time as Israel TM No.  241892 also for the Cook Store in classes 8 and 11, this time filed by TABLE TOP COLLECTION LTD.

Although both marks include styling, the text is identical and the logos are similar. In fact one seems to be a red on white negative of the other in white on red.

An oral hearing was arranged on 28 May 2014, and Ms Helena Kazen, the owner of Surprise Import & Marketing Of Gifts Ltd did not turn up to be cross-examined on her statement, and also failed to inform the adjudicator Table Top Collection LTD. that she would not be coming. The lawyer representing Ms Kazen and Surprise Import, Gornitzky and Partners claimed to have Power of Attorney to represent her, and went outside with the Table Top’s representative who phoned their client. Table Top decided to give up on their mark and also on the expense of cross-examining Ms Kazen.

On 9th July 2014, Surprise Import requested that Table Top, represented by Ehud Porat, Attorney and Notary, put something in writing to the effect that they were dropping their application. On 10 July Surprise Import requested 30 days to update the court. On 14 July Ms Yaara Shoshani Caspi gave Surprise Import until 20 July 2014 to give their decision to Table Top and both parties were to inform the court as to what had transpired and how they intended to continue

On 20 July, Table Top informed the court, and on 29 July Surprise Import informed the court. In their report to the court, Table Top requested legal costs, clarification and an additional hearing on the main dispute or on intended.

In her ruling, Ms Shoshani Caspi noted that giving up on a trademark application is not a trivial matter, particularly in a competing marks procedure where both parties are considered equally entitled to the mark until a ruling is made. In this case, Grodinzky apparently negotiated on behalf of their client but required telephone confirmation for the agreement reached so the extent of their representation was unclear. In the circumstances, they were required to put into writing a specific request and have failed to do so prior to this ruling issuing

In the circumstances, the competing marks procedures is to continue and both sides are to present evidence and to be available for cross-examination.

In this instance Ms Yaara Shoshani Caspi did see fit to compensate the second applicant for Surprise Import’s behaviour and fined Surprise Import & Marketing Of Gifts Ltd 7000 Shekels in legal costs.


Cook and Bake – Tempering Strict Interpretation of the Law with Mercy

September 9, 2014

 

259564 - The registered mark

259564 – The registered mark

Israel Trademark No. 259564 for the logo “Cook and Bake” was filed by “Surprise Import & Marketing Of Gifts Ltd”. It covers cutlery and razors in class 8, devices for hitting, cooking in class 11 (from the Hebrew, it seems beating heating was intended) and for tools and Household or kitchen containers, glassware, porcelain and earthenware not included in other classes in class 21.The mark was registered and for obvious reasons Cook n’ Bake LTD. filed to cancel the mark on 27 May 2014. On 7 August 2014, the mark owner requested an extension to respond to the request. A change of personnel at the legal representative (Gornitzky and Partners, Attorneys-at-Law) was given as grounds for the extension request.

The legal representative claimed that the deadline for filing evidence was 1 August 2014, but the patent office calculated that it was actually two months from the date of the submission of the cancellation request of 27 July 2014, and had already passed.

Gornitzky and Partners, Attorneys-at-Law were and remained the agent of record. A change of personnel within the firm, or moving a case from one attorney’s responsibility to another is not considered a change of representation. The argument that the lawyer had not got around to reviewing the case was not considered a legal basis for a time extension. Ms Shoshani Caspi who ruled on the request, felt that by Law the request should have been thrown out. Nevertheless, since trademarks are property, Ms Shoshani Caspi ruled beyond the strict letter of the law, and granted the attorneys until 31 August 2014, on condition that they paid the requisite extension.

 

Comments

לפנים משורת הדין” or clemency, is a legal principle well established in Jewish Law. See, for example, Babylonian Talmud: Baba Mezia 30b.

Specifically in monetary matters, strict interpretation of the Law is considered the behavior of the men of Sodom. On the other hand, lawyers should be encouraged to take their dockets seriously. In addition to requesting the extension fee, this is a classic case for ruling costs to the opposers, who could claim that their rights are ignored.

As we enter the period leading up to the Day of Judgement when we petition the Almighty to judge us mercifully and not in accordance with the strict letter of the Law, this ruling seems singularly appropriate if perhaps unfair to Cook n’ Bake LTD.

One way to compensate Cook n’ Bake LTD. would be to award them costs.


Gree

September 9, 2014

Israel Trademark No. 258113 to Gree Inc was allowed under the Madrid Protocol. In 27 categories.

Parfums Gres SA opposed the mark in class 3. Gree Inc did not respond and the mark has been restricted do as not to include coverage of class 3.


Kambrook Trademark Cancelled due to Lack of Use

September 9, 2014

electrical kitchen gadgets

Distributing Pty. LTD own Israel Trademark no. 97166 “Kambrook” for Electrical kitchen appliances; electrical cooking utensils including toasters, grillers, kettles, coffee makers and frying pans; all included in class 11.

In March 2014, Breville Pty. LTD, represented by JMB, Davis Ben-David filed a request to cancel the mark on the grounds that it hadn’t been in use in Israel over the three years prior to the request for cancellation being filed and was thus invalid under Section 41(a) of the Trademark Ordinance.

Evidence of lack of use included affidavits from John Sergeant, the CEO of Breville, and from Yehuda Golan, a private investigator.

John Sergeant claimed that Breville had bought Kambrook out and had marketed products under the name Kambrook in various countries including Australia, New Zealand, and elsewhere and had attempted to file the mark in Israel. Yehuda Golan checked the High Street chain stores selling electrical equipment and also retailers in Tel Aviv and didn’t find anyone who had heard of the brand.

Despite contacting the Agent of Record, no response was forthcoming from the mark owners. In the circumstances, Ms Yaar Shoshani Caspi felt that Breville had presented sufficient evidence to conclude that the mark was not in use and she ruled that it was thus canceled.

Since Breville themselves claimed that Kambrook no longer existed, she did not award costs as there would not be anyone to collect these from.

COMMENTS

Kambrook seems to be in use in Australia and New Zealand. See http://www.kambrook.com.au/

This ruling explains the standards required to prove non-use. It may be compared with the Axxon ruling where the same adjudicator was (rightly) critical of a cancellation request filed by PCZL who did not use a private investigator but rather filed the affidavit of a trainee lawyer who was not qualified to determine use. There the mark was cancelled since the mark holder failed to respond.However as it turns out, the contested mark is actually in use, as I discovered with a basic Internet search


Under What Grounds Can A Mark Owner Require A Party Filing to Cancel a Mark to Post a Bond for Expenses?

August 17, 2014

bond lighterfelix lighter!

Briko Burns You More LTD has a registered trademark for HN covering lighters in class 34.

Tranmirian Hamias M’yeri LTD filed a cancellation proceedings and Briko responded to a cancellation request from Tranmirian Hamias M’yeri LTD.  to post 70,000 Shekels to cover legal expenses should their attempt to have Israel TM 245007 cancelled fail.

At the time the request was made, the parties had both files statements of case and Tranmirian had already filed evidence.

The request to post costs was based on legal precedent. Briko argued that as a rule, companies should post bail, and the onus is on the company to persuade the courts that this is not necessary. The Company Register lists  Tranmirian as not keeping the law since for 6 years they haven’t paid their company fees. Briko argued that this is sufficient to show that  Tranmirian is not on a sound financial footing.  Briko further argued that  Tranmirian have been using a wrong address which further complicates collecting should Briko win.

Tranmirian countered that none of the above was supported by an affidavit and this alone should be sufficient to have the request thrown out.  Tranmirian claims to be a law abiding company that pays its debts and that the missing fee to the company register was an oversight that has no been attended to.  Furthermore Briko themselves have a similar debt to the companies register!

The wrong address was a typographical error. The correct street was identified, but in the wrong city (Haifa instead of Nahariya). This has also been corrected. The firm denies any liens or mortgages and submitted an accountants letter to the effect that it could settle any bills if it lost. Furthermore, the requested 70,000 deposit was disproportionate to expent costs.

In her decision,  Ms Yaara Shoshani Caspi ruled that requesting a bond was legitimate if there were reasoanble grounds to conclude that an opposing party would not be able to pay their bill. A debt to the company register is not sufficient, and certainly where it is settled on being brought to the attention of the party in question. She concluded that there were insufficient grounds to require Tranmirian to post a 70,000 Shekel bond and she therefore rejected the request and ordered 1000 Shekels costs against Briko.


Voyager, It’s a Decision Jim, But Not as We Know It

August 17, 2014

voyager

Accel Telecom Ltd. filed Israel Trademark Application Number 251612 for Voyager”.

The mark was filed for the following goods: Fixed car phones and connected smart car phones; all included in class 9, and for telecommunication services, namely, providing electronic telecommunication connections, namely, providing voice and data wireless communications connections to enable users to transmit, reproduce, receive, access, search, index and retrieve data namely, images, sounds, text, movies and animations between mobile communication devices and computer communication networks, the Internet, information services networks and data networks; Telecommunication services, namely, telecommunication access services, communication by means of mobile phones, cellular telephone communication, mobile telephone services; all included in class 38.

The mark was accepted on 26 February 2012 and an opposition was filed by Plantronix Inc. on 28 May 2013,

On 27 March 2014 the list of goods was changed to Electronic apparatus, namely communication apparatus, telephones, mobiles, modems, and routers for communication apparatus; all included in class 9.

Somewhat confusingly, the decision states that a decision issued on 9 December 2014. At the time of writing, we consider this date that is in nearly four months time, a little suspect. In that decision, the Patent Office refused to allow the mark to coexist with Plantronics trademark 255989 which is an identical word mark. Our write up of that decision, by Ms Shoshani Caspi, may be found here.

Beyond the requirements of the Law, Ms Shoshani Caspi gave the parties an opportunity to provide evidence for allowing a coexistence agreement, provided the evidence would be submitted at least 30 days before a hearing on the issue.

On 19 December 2013 the parties informed the Israel Patent and Trademark Office that they did, indeed, desire to submit such evidence, but failed to do so. Despite this, a hearing was scheduled for 5 March 2014. During that hearing an agreement was reached that was acceptable to the parties and to the patent office.

However, on 22 June 2014, the parties merely submitted legal arguments without addressing the issue of confusing similarity.

Citing section 30 of the Trademark Ordinance, Ms Shoshani Caspi noted that in extreme circumstances, the Commissioner could allow two mark owners to use the same mark for the same good, and referenced a number of relevant decisions.

The parties argued that each was using the mark for different goods, sold to different customers via different channels and consequently there was not, in fact, any likelihood of confusion.

In this case, Ms Caspi could not accept the argument since the general case, as stated in section 11(9) is that confusingly similar marks cannot be allowed, and in this case the two marks are identical word marks for the same word “Voyager”.

One mark lists the foods as car phones and smart phones in vehicles, and the other as telecommunication equipment, such as earphones, computers and telephony communication equipment, adapters and battery rechargers, so both marks cover car phones. Indeed, the mark in question also covers remote telephony equipment under Class 38.

Ms Shoshani Caspi rejected the argument that in practice, Accel makes car phones and Plantronix makes ear-phones, since she considers these goods complimentary and thus still confusing to the public as to the source thereof.

The parties argued that whereas allowing Aroma to be used by more than one vendor of coffee and cake, was confusing, the current situation was more similar to Great Shape and referred to the 2003 decision concerning marks 107479 and 105968. Ms Shoshani Caspi rejected this argument. She also rejected the argument that since the distribution channels were different, there was no likelihood of confusion as the same customer could conceivably purchase both products.

Citing the Eshel – Yotvata Eshel Supreme court decision (which quoted Friedman p. 431) , she went on to rule that as defender of the public interest she could not allow coexistence, and she referred the case back to the parties to submit evidence in the ongoing opposition.

Decision re Voyager coexistence, Accel Telecom vs. Plantronix, ruling by Y. Shoshani Caspi, 20 July 2014.


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