Eden vs. Eden Wineries – Competing Marks

September 21, 2015

Out of Eden

Two wineries have had the same idea, and have each filed trademarks. One is for Eden, and the other for Eden Winery.

The Israel Trademark Office was not prepared to let two such similar marks coexist, and initiated a competing marks proceeding.


One of the parties filed evidence without the help of legal counsel and then sought legal counsel. On advice of said counsel, they requested to correct their submitted evidence ahead of the hearing arguing that under Section 41 of the regulations, the Commissioner can authorize such amendments.

The other party objects to this, and insinuates that it is destroying evidence, and that there is no procedure for ‘correcting’ an affidavit once it has been submitted. The applicant denies trying to hide anything and claims that the Patent Office has wide discretion regarding allowing such amendments.

The first party responded and the second party requested that the first party’s response be struck from the record. The Deputy Commissioner Ms Jacqueline Bracha decided not to relate to all the responses and counter responses, but only to the issue of submitting further evidence and correcting the submission. She noted that the first request understood that it was permissible under Court Procedural Rules adopted by the Patent Office in the relevant Circular (013/2012 v. 1), and that neither side had asked or received permission for subsequent submissions.

On the grounds that the procedure for competing marks is not set out in the regulations and that the hearing has not happened, the Deputy Commissioner Ms Jacqueline Bracha agreed with the request and allowed the submission.  As to the charges of ‘correcting the affidavit’, Ms Bracha considers that the applicant wishes to exchange one set of evidence with another and not correct the affidavit, and considers this allowable, whether as submission of additional evidence or as correcting the statement of case.

The Deputy Commissioner based her ruling on the following considerations:

  1. the Affidavit related to the key issues of when the mark was first used, extent of use and use in good faith. She was prepared to consider discrepancies between the first and second statements in her final ruling, but considered it appropriate to allow the exchange of evidence.
  2. The submission of the additional affidavit does not turn the clock back and result in a lost of opportunity to the competing party who can cross-examine on the apparent discrepancies if he so wishes.
  3. The competing party can relate to the evidence in the second affidavit in writing up until two days before the hearing.

Noting that such procedural irregularities cause additional work, she ruled costs in favour of the competing party, but due to the competing party submitting three rounds of procedural complaints she limited the interim costs to a mere 500 Shekels.


I am not sure that wine is associated with Eden. Wine and its afflictions were first discussed after the Flood. That as may be, there is no place in Israel that is called Eden. We to have an Arab village called Faredis which became corrupted as Paradise, and there is a Gei Ben Hinom, the Hinom Valley below the Old City of Jerusalem whose name as Gehenna become associated with hell.

The name Eden is used for by a natural food supermarket, by L’Oreal and others. Apart from bottled water marketed under Waters of Eden, the mark is already registered by Absolut Vodka in class 33, which is the same class as wine.

The State of the Union Address

September 16, 2015

state of the union

On Thursday 1o September, the Union of European Practitioners in Intellectual Property held their Union Dinner at the Royal Overseas League. The State Taste of the Union Address was given by IP Hall of Fame Inductee, Professor Jeremy Phillips, and the cost for the dinner and talk was 69 pounds a head, with discounts to 44 quid for members. That’s a 420 NIS cover charge discounted to 250 NIS. I reckon that this was extraordinary value for money for dinner and a chance to hear Professor Jeremy Phillips, who is the founder of Managing Intellectual Property (MIP), the IPKAT and much more besides.

The dinner was a last chance to hear Professor Phillips who is planning on full retirement from all IP interests, including lecturing, his editorship of Marques and of the Oxford Journal of Intellectual Property Law & Practice.

Jeremy’s talk was titled “IP in 2015 – Where we are and where I thought we’d be”.

Cinema CityAt great expense, I have managed to persuade Professor Phillips to give a repeat performance in Israel on 7th October 2015 at Sin City, Jerusalem.

The event, including buffet style refreshments, wines and beer, is fully subsidized to IP practitioners of all kinds, legal and cowboy, examiners, judges, clients, patent attorneys, lawyers, paralegals and the like. Places are limited however, and are filling up fast. If you’d like to attend, please register here.

When: 7 October 2015; 5 PM to 7 PM  Add to Calendar

Where:   Cinema City, Itzhak Rabin 10, (Opposite the Supreme Court),Jerusalem

To register,
Contact us here

“Intellectual Property exclusions – who decides and how?”

September 10, 2015

After the coffee break, the conference took on a more traditional IP feel, with a session chaired by Dr Roman Cholij on “Intellectual Property exclusions – who decides and how?”

 Judge Arnold and Dr Factor

Judge Arnold and Dr Factor

The Hon. Mr Justice Richard Arnold, Judge of the High Court of England and Wales spoke on “Trade marks which are contrary to public policy or accepted principles of morality”.

After apologizing for referring to branding that some might find offensive, Judge Arnold referred to various marks that were considered offensive and others, such as Dick and Fanny for contraceptives, though crude, were considered acceptable. Of course, in a Catholic country, contraceptives might be considered as against ordre public. Old favorites, such as FCUK standing for French Connection United Kingdom were discussed. The final case mentioned was Fucking Hell, a brand of beer which was allowed since hell is German for pale and signified that this was a pale ale, and Fucking is a village in Austria where it is made.
(Interestingly, in the conference I organized back in 2011, my brother Aharon (ne Jeremy) spoke about similar Israel trademarks. One such Israel trademark to be refused was Jesus Boat. I trademark for a company offering cruises in the sea of Galilee. Is it offensive? I think not. Then again, I am not a Christian.

I have seen many of Judge Arnold’s IP rulings over the years, and recent Israeli decisions such as Waters of Eden and finding ISPs responsible for not patrolling the Internet for copyright infringement cite his rulings. His ruling re Mylan infringing Copaxone’s patent was favorably received in Israel, whereas his ruling re patent term extensions for Neurim was appealed, and Lord Robin Jacobs referred it to the European Court of Justice ECJ.  It was a pleasure meeting such an erudite member of the judiciary.

Dr Kathleen Liddell, Faculty of Law, University of Cambridge and Director, Centre for Law, Medicine and Life Sciences spoke on “Immorality and patents: the exclusion of inventions contrary to ordre public and morality”. I wondered if she was related to Alice Liddell, the daughter of Henry Liddell, Dean of Christ Church  and inspiration of the Wonderland stories, in what is referred to in Cambridge as ‘the other place’.

Professor Joshua D. Sarnoff, who was clearly a member of the Tribe, spoke on “Religious, Moral, and Philosophical Origins of the Exclusions from Patents for Science, Nature, and Abstract Ideas, How They Should Be Applied, and Why It Matters”. He covered a tremendous amount of history in a short time and gave the most convincing explanation of why the isolation of materials such as insulin or genes could be considered as inventing rather than discovery, and thus be patentable.

For lunch, I was given a tray with a Halla and a range of sealed packages of delicatessen style Kosher food. Oddly, there was both cream cheese and sliced turkey, with poultry being considered meat and thus not servable with milk products for about two millenia when the dissenting Rabbi Yossi the Galilean, buckled under.
I ate the sliced turkey with hummus and a packet of ginger biscuits. I later put the chopped herring and smoked salmon in the fridge and flew them back to Israel. I put the Halla to one side, expecting a second one for supper, two loaves, representing the double portion of manna, being required for Friday night’s meal. What struck me most about the conference, with its wide eclectic audience, was how very friendly everyone was.

Ketchup Wars

August 20, 2015

Heinz has removed the Hebrew transliteration of Ketchup from bottles of their iconic sauce. The reason? Israel has a standard for Ketchup that Heinz doesn’t come up to. Specifically, Israeli Ketchup contains a higher percentage of tomato extracts than Heinz’ tomato flavored condiment.

I read about this development in Yesterday’s Idiot Acharonot (Israel’s largest circulation fish & chips wrapper newspaper) whilst enjoying a leisurely breakfast on holiday in the Galilee.  The topic is a hot sweet & sour issue among fellow Anglo-American Immigrants who I am in contact with on Facebook.

To those of us who grew up in the UK or the US, Ketchup meant Heinz. Heinz launched its first Tomato Ketchup in 1876, Heinz was at the forefront of exploring natural preservation, and in 1906 was first to launch a Ketchup free from artificial preservatives. To prevent it growing a beard without fungicides, it includes enormous amounts of sugar and vinegar.



There never were 57 varieties of ketchup or indeed of anything else. Nevertheless, worldwide, Heinz is the #1 ketchup.

In the 17th century, the Chinese mixed a concoction of pickled fish and spices and called it (in the Amoy dialect) kôe-chiap or kê-chiap (鮭汁. By the early 18th century, the table sauce had made it to what is now Malaysia and Singapore, where it was discovered by English explorers. The Indonesian-Malay word for the sauce was kecap (pronounced “kay-chap”). That word evolved into the English word “ketchup”, and English settlers took ketchup with them to the American colonies.

In the United Kingdom, preparations of ketchup were historically and originally prepared with mushroom as a primary ingredient, rather than tomato. Ketchup recipes begin to appear in British and then American cookbooks in the 18th century. 

So the term Ketchup doesn’t imply containing tomatoes at all. It really simply means a savoury sauce. Nevertheless, to most of the world, the term relates to the thick dark red sauce that Heinz manufactures and distributes.

In Israel, a variety of condiments are sold as tomato ketchup. The most widely distributed and probably the best of them is Osem’s ketchup, which also comes in a distinctive container that is perhaps as well recognized in Israel as Heinz’ is elsewhere. I prefer Heinz’ Ketchup as it the taste I grew up on. My Israeli kids prefer Osem’s.

To put the argument into some kind of perspective, I’d like to use the analogy of mustard. I am sure that for British ex-patriots like me, mustard is a very strong condiment prepared from a powder. Coleman’s mustard has a long and distinguished history.

Jeremiah Colman founded Colman’s of Norwich in 1814. To create a tangy flavour, he blended brown mustard (Brassica juncea) with white mustard (Sinapis alba). From 1855 the firm introduced its distinctive yellow packaging and bull’s head logo, and in 1866 was granted Royal Warrant as manufacturers of mustard to Queen Victoria. The royal household still uses Colman’s today.

colmans mustard

Now the French make an entirely different condiment called Dijon mustard, that is rather milder. Americans have a sort of yellow ketchup that they call mustard, but which has no similarity to English mustard. One could envisage the UK banning American mustard from being sold as ‘mustard’ without a qualifier, such as ‘American style’ mustard. Similarly, one could imagine Americans requiring Colman’s Mustard to be sold with a government health warning that it should be consumed in small quantities only, and that it is rather different than what Americans are used to.

Israeli bottles of Heinz Ketchup will still have the word Ketchup on their labels in English, just not in Hebrew. Presumably English and American immigrants will see that the sauce is what they are looking for, and Israelis will appreciate that the condiment is something different. It is not a bad compromise. However, as the term ketchup doesn’t actually imply tomatoes and the average consumer is aware that condiments from different companies taste slightly different, and since both Heinz and Osem’s ketchup bottles feature the name of the manufacturer clearly and each comes in a distinctive bottle, I am not convinced that this is really necessary.

namesred mug

There are, of course, Israeli precedents for this type of thing. Nestle’s Nescafe Original was marketed in Israel as Red Mug. They couldn’t call it Nescafe as the term was generic. The Hebrew word Nes means miracle, and, where Elite’s Cafe Namess (soluble coffee) was known as Nescafe (miracle coffee), there was no way for Nestle to obtain a trademark for Nescafe.

Pips Cola

Prior to the Oslo accords, Pepsi Cola was not available in Israel, as Pepsi decided to kowtow to the Arab boycott. A Galilean Arab sold a locally produced cola as Pips Cola. When Pepsi entered the Israel market they tried to get an injunction against the Arab manufacturer. The Israel courts correctly noted that they had abandoned the local market. They ended up having to buy him out.

For British readers of my generation, I refer to classic Goodies Episode “The Bunfight at the OK Tearooms“, where ketchup as a metaphor for movie blood and gore was taken to its logical conclusion.


J-Date swipes at J-Swipe

August 11, 2015

There are well-defined groups of Jewish singles looking for partners. In traditional society, the match-maker paired up potential partners, and made his/her living from so-doing. In the wider society, friends and acquaintances suggested that people who seemed compatible should meet. Depending on the perceptiveness of the match-maker, the date could be very successful or very tedious for both parties.
In 1997 J-Date offered a computerized match-making service to Jews. Apparently their questionnaires enable people to provide more details of who they are and what they are looking for. J-Date quickly grew to become a leading service provider.
If 1997 was the beginning of the Internet revolution, nearly 20 years later things have changed. J-Swipe is an application that lets those interested in dating discover the proximity of potentially suitable partners, to find out a little more about them, and to contact those of interest. It is apparently a circumcised ritually immersed version of Tinder, a similar application that is less tribal. Apparently J-Swipe is the #1 Jewish dating app with users in over 70 countries. They also claim 375,000+ JSwipe users from across the world (which compares nicely with the number of times this blog has been accessed, but my statistic includes repeat views, and the blog has been going for longer).
Both J-Date and J-Swipe target the same audience, i.e. single Jews, and offer similar services. So J-Date sued J-Swipe and also connected hosting sites and the like, threatening to sue them.
J-Date claims patent infringement and trademark infringement.
Their patent is US 5,950,200 to Sudai and Blumberg titled ” Method and apparatus for detection of reciprocal interests or feelings and subsequent notification”
The independent method claim is

1. A method that notifies people that they feel reciprocal interest for each other, comprising the steps, performed by a processor of a data processing system having a memory, of:
receiving input from a first user indicating a user ID of a specific person in whom the first user has an interest, the first user already being aware of the existence of the person whose ID they entered;
receiving input from a second user indicating a user ID of a specific person in whom the second user has an interest, the second user already being aware of the existence of the person whose ID they entered;
determining whether the user ID of the person in whom the first user has an interest matches a user ID of the second user;
determining whether the user ID of the person in whom the second user has an interest matches a user ID of the first user; and
if and only if a match occurs in both of the determining steps, notifying the first user and the second user that a match has occurred.

There is an independent apparatus claim as well:

28. An apparatus that notifies people that they feel reciprocal interest for each other, comprising:
a first input portion, configured to receive input from a first user indicating a user ID of a specific person in whom the first user has an interest, the first user already being aware of the existence of the person whose ID they entered;
a second input portion, configured to receive input from a second user indicating a user ID of a specific person in whom the second user has an interest, the second user already being aware of the existence of the person whose ID they entered;
a first determining portion, coupled to the first and second input portions, configured to determine whether the user ID of the person in whom the first user has an interest matches a user ID of the second user;
a first determining portion, coupled to the first and second input portions, configured to determine whether the user ID of the person in whom the second user has an interest matches a user ID of the first user; and
a notifying portion, coupled to the first and second determining portions, configured to notify the first user and the second user if and only if the first and second determining portions have detected a match.

There is also a means claim and a software claim.

Back in 1999 such patents issued. Nowadays they don’t.

The trouble is, as VOX put it, JDate claims to own the concept of connecting 2 people based on mutual attraction.

Now, J-Date denies that it against market competition:
“This is not about us discouraging market competition,” Michael Egan, CEO of the company behind JDate, wrote to the New York Observer’s Brady Dale. “Our case against JSwipe is about their theft of our technology.” I am not convinced.
Having an issued patent, there is a rebuttable assumption of validity and they cannot be accused of bad faith in attempting to assert their patent against infringers. However, I doubt that the patent would be upheld in court.

When considering validity, US courts are governed by current case law in their interpretation of concepts such as patentable subject matter, novelty and obviousness. Many patents issued at the turn of the millenium will not stand up in court.

In addition to patents, J-Date also claims trademark infringement. J-Date argues that J-Swipe infringes their mark. Back when I was a student in England, college Jewish Societies were known as J-Socs and presumably still are. The left leaning America-Israel pressure group J-Street uses a J for the same reason. The J indicates Jewish. It seems unlikely that the courts would recognize an individual company having rights in the letter J for dating services.
I doubt that the patent would stand up in court as most of the computerized service patents are voidable in light of recent decisions, and the patent in question doesn’t seem very exciting. I also doubt that the argument of trademark infringement will stand up. The thing is that J-Date have deep pockets and see a threat to their market dominance. They are suing because they can.

Yentl is using behavior more appropriate to a troll. Still all is fair in the business of love.

Matchmaker – Fiddler on the Roof (1971)


August 4, 2015


This ruling considers whether a generic top level domain g.TLD can be registered as a trademark.

Traveljigsaw LTD filed Israel Trademark Application TM 241856 for the word mark rentalcars.com for:

Transport services; travel services; car hire services; arranging holiday transport; vehicle rental and leasing services; rental and leasing of passenger vehicles, commercial and industrial vehicles; rental and leasing of cars, bicycles, motorcycles, camping cars, trucks, lorries, vans, coaches, buses, caravans; rental and leasing of vehicle equipment and apparatus; rental and leasing of vehicle accessories, including, luggage carriers, car seats, child safety seats, vehicle trailers, luggage racks, bike racks; arranging for transportation of persons; travel arrangement services; travel reservation services; electronic information services, namely, interactive and on-line information services featuring vehicle leasing and rental and travel information and interactive and on-line reservation services for vehicle leasing and rental; booking and ticket services; arranging and/or booking of holidays, travel, tours, cruises and vehicle hire, including arranging and/or booking of holidays, travel, tours, cruises and vehicle hire via the Internet; arranging and/or booking of seats for travel, including arranging and/or booking of seats for travel via the Internet; travel agency services, including travel agency services via the Internet; including, but not limited to, all the aforesaid provided by electronic means including the Internet; consultancy, advisory and information services relating to all the aforesaid services, all included in class 39.

The mark was applied for on 26 October 2011 and the Trademark Examiner at the Israel Patent Office refused the mark under Section 8a of the trademark Ordinance 1972 as the mark was descriptive of the goods to be protected.

The Applicant disagreed, arguing that the mark was not descriptive and the link between the mark and the services was tenuous. The mark relates to a website and not to car services. The site doesn’t even offer car hire services but merely is a platform for such services. The addition of the .com makes the mark distinctive and not merely descriptive.

The Applicant further argued that various countries such as Italy, Greece and Romania had allowed the mark to be registered. The company was internationally recognized. The applicant did not, however, want the mark based on a foreign registration.

The applicant supported their argument with an affidavit which was not found persuasive. They therefore filed a second affidavit, and, following a final rejection appealed this decision to the Commissioner to rule based on the contents of the file, but requested that the contents of the second affidavit be kept confidential as it allegedly included trade-secrets.


Trade Secrets

Section 23 of the Fair Trade Laws 1999 allows the court to keep certain submissions secret, See 2375/13 Rami Levy vs. Moshe Dahan, 8 July 2013, where relevant considerations such as relevance of information to the proceedings, damage likely to be caused by its publication and the advantage to third parties.

In this instance, the confidentiality request relates to expenses in marketing and publicising the website, number of customers in each country during the period of 2004 to 2012, number of web visits from each country, invoices to Google and other suppliers.

Section 5 of the Fair Trade Laws states that:

A trade secret is business information of any type that is not public knowledge and is not easily obtainable, that provides a commercial advantage over competitors, so long as that the owners take reasonable precautions to keep the information confidential.

The information in question may be considered as trade secrets. In adversarial proceedings, the information is usually necessary to follow the adjudicator’s reasoning. In this instance, however, the proceeding is one of examination between the applicant and the Israel Patent Office and the amount of information that needs to be published is simply the minimum required to make the decision comprehensible.

In this instance, the decision does not require the second Affidavit by Peter Ronney from 2 May 2014 to enable interested parties to follow the decision, and so this information may stay restricted.

Inherent Distinctiveness

The purpose of section 8a is so that articles labeled with the desired mark (in this case rentalcars.com) can know the source of origin of goods or services (Seligsohn page 20).

In general, marks may be generic, descriptive, indicative, random and imaginary, although sometimes the boundaries between these categories are blurred. There is a theoretical continuum between generic and created marks, and the more unique and random the mark, or the more a mark has acquired distinctiveness, the wider protection, and generic marks are not protectable at all. Words that are descriptive of the goods or services must remain in the public domain. “Rentalcars.com” is, accrding to Deputy Commissioner, Ms Jacqueline Bracha, wholly generic and descriptive of the services provided, and the dotcom suffix is insufficient to make the mark unique and distinctive.

The .com suffix merely indicates a generic top level domain gTLD, see Kerley’s Law of Trademarks and Trade Names 15th Ed. (201) P. 859. The issue has been widely discussed in previous ruling 234287 “Hotels.co.il” from September 2013.

Quoting Kerley, the dotcom suffix merely indicates an international profile and therefore does not provide distinctiveness.

The summations noted that the company provides car rental services in Israel and abroad. Consequently, the argument that the company does not ONLY provide care rental services was not given much weight as this was the major activity and other services were related.

The fact that a name is registerable as a domain name does not imply that it is registerable as a trademark as the guidelines and requirements for registering domains in Israel  are very different from the trademark regulations, so the fact that a domain was registered does not free the patent and trademark office from independently examining whether marks are distinctive enough to serve as trademarks.

The commissioner noted that there is no connection between Traveljigsaw – the name of the service provider, and the services provided. Citing the TTAB – the Trademark Tribunal in the USPTO in its ruling concerning 1800.tickets and tickets.com it was ruled that such marks may not be registered even if the term ticket is dropped from the list of goods.

“The test for determining whether a mark is merely descriptive is whether the involved term immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single significant quality, feature, etc. of the goods or services. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-established [*5]  that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Recovery, 196 USPQ 830 (TTAB 1977).

In turning first to the alpha or letter portion of this alleged mark (the word “tickets”), we find from this record that the evidence is overwhelming that the word “tickets” is merely descriptive of applicant’s services, even after all the earlier “ticket” and “ticketing” language has been scrubbed from the recitation of services.

Similarly in In re Dial A Mattress Operating Corp., 1999 TTAB LEXIS 623, 9-10 (TTAB 1999)  concerning the mark 188-mattress:

“We are persuaded that the analysis and rationale set forth in Dranoff-Perlstein and 800 Spirits, supra, would serve as an appropriate complement to the Federal Circuit’s Ginn two-part test in cases requiring a determination of the genericness of alphanumeric telephone number marks. Accordingly, we hold that if the mark sought to be registered is comprised solely of the combination of a designation (such as a toll-free telephone area code) which is devoid of source-indicating significance, joined with matter which, under the Ginn two-part test, is generic for the identified goods or services, then the mark as a whole is generic and unregistrable. Stated differently, a generic term is not transformed into a registrable mark simply by joining it with a toll-free telephone area code which itself is devoid of source-indicating significance.

TMEP section 1209.01(b)(12). Furthermore, it appears that a similar analysis has been adopted by the Office for examination of the ever-increasing number of marks which consist of or incorporate those portions of Internet domain names which are devoid of any source-indicating significance, such as “http,” “www” and “.com”. See Examination Guide No. 2-99, issued September 29, 1999, entitled “Marks Composed, in Whole or in Part, of Domain Names.”

Acquired Distinctiveness

Since the mark is generic it cannot have acquired distinctiveness. Nevertheless, the ruling went on to examine the alleged acquired distinctiveness and, citing Kerley, noted that A domain name registration as such is not an intellectual property right: it is a contract with the registration authority.”

In conclusion, the mark was refused.

Re TM 241856 to Traveljigsaw LTD for “RENTALCARS.COM”, ruling by Ms Jacqueline Bracha, 30 June 2015.

Coveri (Caveri?)

July 1, 2015

Enrico Coveri

On 3 May 2011, Enrico Coveri s.r.l. filed Israel Trademark Application No. 237567 for ‘COVERI’ coveri(ng) clothing, footwear and headgear, all in class 25. The mark was eventually allowed and published for opposition purposes on 30 April 2012. On 23 July 2012, Sar-Go Investment LTD opposed the mark. (The opposition actually related both to Israel TM 237,567 ‘COVERI’ and to Israel TM 237566 ‘ENRICO COVERI’ in Class 35, however, Sar-Go Investment LTD retracted their opposition to TM 237566 ‘ENRICO COVERI’ which was subsequently granted). In parallel with the Opposition before the Israel Patent Office, Enrico Coveri s.r.l. sued Sar-Go Investment LTD for infringing their (pending) mark. [– this is possible under common law rights, albeit not a good idea to sue before the mark issues].

Sar-Go Investment LTD asked the Court to require that Enrico Coveri s.r.l. post a bond [which is common practice where a plaintiff is not domiciled in Israel] and, on failure by Enrico Coveri s.r.l. to do so, the Court closed the case. On 31 December 2012, Sar-Go Investment LTD filed two trademarks, Israel TM 252378 “COVERI KIDS” for wholesale of clothing and shoes for children and youth, for “COVERI HOME” for wholesale furniture and children’s domestic accessories both in class 35. Both applications were suspended at the Opposer’s request until after the present Opposition is concluded.

Opposer’s Arguments

The Oposer claimed that they have used the (unregistered) marks Coveri Kids and Coveri Home for 15 years and had a reputation among their clients for these marks. The Opposer is a wholesaler whereas the Applicant is a manufacturer [this argument, together with the competing marks scenario created seems to be setting the scene for a request for co-existence]. In consequence of their longer usage in Israel, the Opposer claims that they should take precedence over Enrico Coveri s.r.l. in Israel under Section 24(a1)(2) of the Trademark Ordinance 1972, and, under sections 5(11) and 6(11) argued that allowing Enrico Coveri s.r.l.’s application to register would be unfair trade, would mislead the public and be contrary to the public good. In an alternative strategy, the Opposers argued that if Enrico Coveri s.r.l.’s was not canceled, then the two marks should be allowed to coexist due to the difference in sight and sound of the marks, as their desired mark was to be pronounced CAveri whereas the opposed mark was to be pronounced COveri. [I find this argument a little tenuous. The mark does not come with pronunciation instructions, and Israelis include Bedouin, Russian immigrants, American immigrants, Ethiopians, Thai foreign workers and Sudanese illegal immigrants. I doubt that there is a common pronunciation of vowels].

Applicant’s Counter Arguments

The Applicant claims a worldwide reputation in the word Coveri that goes back to the Seventies. [“When The Levee Breaks” — Led Zeppelin (1971) was a coveri song from the Seventies. It was originally recorded by Kansas Joe Mccoy and Memphis Minnie in 1929!]

The Applicant denied the allegations of misleading the public as they claimed to have the reputation and also argued that the Trademark Ordinance only protects registered marks, which the Opposer had not (then) registered.

Furthermore, the Applicant claimed that they were the first owner of the Coveri mark and back in 1986 had applied for ENRICO COVERI in claims 3 and 18, for soap and leather goods, and this the Opposer’s claims should be rejected. The Opposer was acting in bad faith as it was inconceivable that he was unaware of the Applicant who had marketed goods in Israel that were branded as COVERI.


In the District Court proceedings, the current Applicant accused the Opposer of willful infringement and of ignoring requests from the Applicant to cease and desist from using the term Coveri. Furthermore, the Applicant argued that the Opposer’s us of the term Coveri would lead to misleading the public as the Opposer’s goods were sold by the Applicant. The Applicant further claimed dilution of their mark and Opposer’s enrichment at their expense.

In their defense, the Opposer denied knowing about the Coveri brand when they chose their own branding. As wholesalers of clothing brands and not manufacturers, they were unaware of the Applicant’s brand. Furthermore, the Opposer denied infringing the Coveri mark as their marks was Coveri Kids and Coveri Home.

However, as noted above, the District Court Proceedings were thrown out due to Applicant’s failure to post a bond.

The Applicant here, Enrico Coveri s.r.l., argued that the position taken by Sar-Go Investment LTD in the District Court estoppled them from claiming that the current proceeding be dismissed as the parties are the same in both proceedings. Support for this argument was found in Civil Appeal 246/66 Klausner vs. Shimoni.

The Trademark Office considered that the current situation was different as in the previous (court) proceeding, there was no substantive ruling as the case was thrown out. Also, the identities of the parties (and the marks in question) has switched, thus there is no estopple against bringing the case to trial. Furthermore, the legal arguments are different. For additional analysis, see TM 245411 Orez Gamalim Hahav Pninim (graphic logo) Yoram Sassa vs. Yehudit Matck, as published on the patent office website in April.

In conclusion, Deputy Commissioner MS Jaqueline Bracha saw no reason not to rule on the merits of the case.

Inequitable Behavior and the Common Good.

The Opposer claimed that the applications should be canceled as they were filed in bad faith, since the filing occurred 15 years after the opposer was using the mark and gaining a reputation in it. Furthermore, since the Court had thrown the case out, dealing with it on its merits now would be contrary to the public good under Section 11(5). The Applicant also accuses the Opposer of inequitable behavior since the choice of the term Coveri by the Opposer was itself an attempt to cash in on Henrico Coveri’s reputation. Arguments that Coveri means Cover Israeli Kids as the Opposer had claimed were dismissed as fanciful and unconvincing, and the alleged correct pronunciation as CAveri and not COveri as written was further indication of inequitable behavior.

The Opposer considered the marks were not registerable, as, due to inequitable behavior, their registration was impermissible under Sections 11(5) and 39(1a) of the Ordinance. However the Deputy Commissioner considered that this was not grounds for Opposition per se, only, for cancellation of an issued mark. Support for this position was found in the Pioneer decision.

[I am less than happy with the Deputy Commissioner’s ruling that inequitable behavior can be grounds for cancellation of a mark once issued, but not for opposing the mark. I know it is considered a dirty word, but I am relatively formalistic in my approach to the Law and have little time for interpretation of what the law meant to say. However, I can see no logic in allowing grounds of inequitable behavior to be sufficient to have an issued mark canceled, but not sufficient grounds to have a pending mark opposed. This seems senseless. I note that I disagreed with Ms Bracha in the Pioneer case as well  so at least I am consistent. Perhaps consistently wrong, but consistent.]

According to Ms Bracha, Section 11(5) was to cover cases such as to prevent an opponent to prevent an applicants from using opponents copyright protected artwork as trademarks.

Misleading the Public and Unfair Competition

As far as misleading the public is concerned, Ms Bracha considers that the mark has to be at least widely known if not formally ” a well-known mark”. She went on to apply the triple test to examine the similarities between the marks. As far as the sound of the mark is concerned, Ms Bracha noted that the Opposer claims that Coveri Kids has a patah sound (“a” as in cow – i.e. Cah-ver), whereas in on Henrico Coveri’s Coveri, the Sound is a holum “Oh” as in Copper. Noting that they are written the same way, Ms Bracha considers it unlikely that one can ensure that the marks are correctly pronounced and doesn’t think that anyone other than the Opposer’s who would be aware of the difference. [here I disagree. The word Coveri has a Kamatz Qatan and is pronounced Oh as in Copper by Yemenites and Ashkenazim but as an Ah by Spanish and Portuguese and in the Standardized Hebrew pronunciation. Nevertheless, the word, written in English (Latin) letters, could certainly be pronounced either way. This reminds me of the road sign conveniently placed near Heathrow Airport to confuse tourists. It points to Slough. Is the ough an oo as as in through? Is it an uf as in rough, an ‘or’ as in bought? No, it’s an ow as in bough!]

In the Coveri mark and in Coveri Kids and Coveri Home, the dominant word is Coveri. Furthermore, the other words are descriptive and lacking in independent distinctive character. Consequently, the marks are visually and audibly very similar. Both Opposer and Applicant sell clothing and children’s goods, one wholesale and the other retail. The client base is different, but it still overlaps and one could imagine a purchaser of Coveri clothing could go into a COveri Home shop to buy furniture or accessories. Whilst, it is certainly possible that Henrico Coveri is using his name for branding purposes and Coveri Kids means Cover Israeli Kids so there is no intent to confuse, however, it is unlikely that the public would be aware of this. The Opposer has stores in the upscale Kikar Hamedina of Tel Aviv. The Applicant’s witness was more circumspect as to where they were using their trademark.


Reputation in a specific market sector is judged by the time period the brand has been in use and the amount of publicity and marketing invested in linking the product to the brand name.

Coveri kids have shown 15 years history of the mark. However, Mina Tzemach’s market research has shown low brand penetration, nevertheless, Ms Bracha agreed with the Applicant that the onus is on the Opposer to show that they have a reputation in the mark and not that the Applicant does not.  Ms Tzemach’s affidavit was an appendix to another one and not a freestanding document. However, the The Opposer did not choose to cross-examine her on her findings which rather strengthens them.

Coveri admitted that they had never opened a shop, but claimed that their neckties and other things were sold in boutique stalls. Consequently, it appears that Coveri Kids and Coveri Home have a larger footprint in the market.

Equitable Behavior

It seems that Enrico Coveri acted after discovering that Coveri Home and Coveri Kids were strong marks in Israel. They first sent cease & desist letters and only subsequently filed their own marks, and later still, filed in the District Court. Under cross-examination from Adv. Tony Greenman, Enrico Coveri’s witness spoke about design shows abroad abut did not answer questions about their local advertising. Despite prompting by both Adv. Tony Greenman and by the Deputy Commissioner, the witness failed to show that the mark had been used in Israel prior 2011 and had local reputation. This lead the Deputy Commissioner to suspect that the Applicant’s registration was merely to prevent being sued by the Opposer and was not indicative of actual use or intent to use.

Although in Israel one can apply for a mark not in use if there is intent to use, however the intent should be genuine. The Israel courts view defensive trademark practices with a jaundiced eye.

Such an approach is also true in the US:

A lack of bona fide intent to use is a ground for an inter partes opposition proceeding to an application before the Trademark Board. Aktieselskabet, 525 F.3d at 21; McCarthy § 20:21, at 20-65,66. Lack of bona fide intent to support an intent-to-use application also may render an application void ab initio upon challenge in federal district court.” (W. Brand Bobosky v. Adidas AG, 843 F. Supp. 2d 1134, 1140 (D. Or. 2011).

The long and real usage by the Opposer and lack of cooperation by the Applicant’s witness lead Ms Bracha to consider that the mark should be refused under Section (6)11 of the Trademark Ordinance.

Previous Rights to the Mark

The Opposer claims prior rights to the mark under Section 24(ia)(2) of the Regulation. As far as distinctive marks is concerned, this is a relevant issue.

As cited in ITT. vs. Ratfone Import LTD, 23 June 2009:

“Furthermore, it is important to note that when a mark is canceled from the register or even if it was never registered, this does not indicate a lack of proprietary rights of the owner. There is a right of reputation which is protected in unregistered marks.

In this instance, however, the Opposer did not register their mark. They did not act to have the mark registered, and the present instance and the previous Court case were superfluous. Having ruled that the Opposition should be accepted under Section 11(6), the ownership of the marks is superfluous, particularly as the Opposer has long established usage and the Applicant has not shown usage in Israel. However, the lack of registration by the Opposer should be taken into account when ruling costs.


Registration of the Italian designer’s mark was refused without a ruling of costs to the Opposer. The Opposer’s marks (Coveri Kids and Coveri Home) can continue to examination following this ruling.

Israel TM 237567 “Coveri” to Enrico Coveri, Trademark Opposition by Sar-Go Investment LTD, Ruling by Deputy Commissioner, Ms Jaqueline Bracha, 27 May 2015


Potahto or Poteitoe?

Gefen or Gafen?

Pronunciation aside, this case bears more than a passing resemblance to the Versace case, since we have a well know international design house and a couple of Israeli stores using the name in ambivalent faith. I therefore suspect we haven’t heard the last of this.


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