The IP Factor

Israel Trademark Application No. 231719 “Khan Shaharut” was filed by Negev & Galil Initiatives LTD. for food, drink and temporary accommodation related services in Class 43. The word Khan is Turkish for a caravanserai, an a roadside inn where travelers can rest and recover from the day’s journey. (It also was the name of an English Progressive Rock Band in the 1970s, a wrathful character in Star Trek, and a Marvel Comics character).

Khan Shaharut is the name of a hostelry in Maale Shaharut, a town in the Arava part of the Negev that provides meals and sleeping accommodation. The trademark office rejected the application as lacking distinguishing characteristics (section 10(11) of the Trademark Ordinance 1972, but authorized the applicant to provide evidence that the name had acquired secondary meaning.

In response to the request for evidence of secondary use, the Applicant filed an affidavit arguing that he had purchased the initiative in 2007 from Shaharut Desert Lodges LTD and 21st Century Camel Riders LTD., who had operated the Khan since the 1980s. The applicant was requested to provide additional information regarding publicity of the Khan, and as two years from filing had passed, the case was transferred to the Arbitrator (name not given).  In a hearing in February 2012, the CEO of the Applicant indicated that the trademark Khan Shaharut had been in use since 1985, although the name of the company was Khan Shaharut – Camel Riding.  Since acquiring the company, the name Khan Shaharut was in exclusive use.  In another claim, the CEO argued that Khan Shaharut was situated in Maale Shaharut, (Shaharut Heights), which is not known as Shaharut, and so the word Shaharut could not fairly be considered a geographical application of origin. In a supplementary affidavit, the applicant provided further details regarding the services provided by the site, and that a holdiay village was being developed.

In the Ruling, the Arbitrator rejected claims that the location was only known as Maale Shaharut, since on maps of the judicial region it was called Shaharut. He/she noted that no financial information was supplied that could help substantiate the claim, but nevertheless, provided more than 20 popular Israeli news related internet sites where the mark Khan Shaharut was used in advertisements. The mark was allowed to proceed to publication.

COMMENT

Genghis Khan fought from horseback. Mongolians do ride camels, but they ride the two humped bactrian camel variety, as the image of Mongolians playing camel polo under a statue to Genghis Kahn testifies. In the Negev, we have dromedaries. Whether Mongolian tourists would have a problem with the juxtaposition of Khan and one humped camels is a matter of conjecture. Since the camel riding part of the name is now no longer in use, perhaps we’ll never know.

Three humped camel here . Four humped beast here. Sally the camel here

Trademark Number 23360 for FREESULIN was filed by Beta 02 technologies LTD and after allowance and publication for opposition purposes, was opposed by Abbott Diabetes Care Inc.

The opposition was eventually dropped and Beta 02 technologies LTD filed a request for NIS 33,011.85 in legal costs and NIS  614.55 in out-of-pocket expenses. Adv. David Colb, of S.T. Colb patent attorneys who represented the applicants provided detailed receipts and full information regarding hourly rates and time spent to support the costs requested.

Abbott, represented by Shlomo Cohen Law Offices opposed the costs, claiming that they were exorbitant.

In her ruling, Ms Yaara Shoshani Caspi noted that the costs were incurred by the opposer replacing an affidavit from one witness to a different affidavit of another, and then indicating that the witness would not appear at a hearing with minimal warning. The opposition was  then withdrawn at the start of the hearing, which Ms Shoshani Caspi alleged not only contributed to the costs incurred but was indicative of behavior that was borderline inequitable.

After reviewing the amount of material in the file and the behavior of the parties towards each other and towards the patent office, she ruled that the costs requested were real and reasonable and awarded the full sum requested.

Proctor & Gamble filed a trademark for the word INSPIRATION for perfumeries, essential oils, beauty care and cosmetic preparations, hair lotions, dentifrices, soaps; all included in class 3. On allowance, the mark published for opposition purposes, and IL Makiage LTD opposed the mark.

After depositing evidence and following a hearing, the opposer abandoned the opposition.

Proctor & Gamble’s agent then filed for $38,753.13 in costs.  IL Makiage LTD considered this outrageous, and Ms Yaara Shoshani Caspi concurred, ruling that the details provided by the agent’s accounts department were laconic and did not provide the hourly rate of the attorneys concerned. In circumstances where the costs sought are exceptionally high, this was inadequate. She went on to rule a more modest NIS 35,000 costs which she felt was adequate compensation for the work performed, when considering all aspects of the case.

COMMENT

The costs awarded were about 27% of those asked for. The costs requested do seem exorbitant, but I haven’t seen the amount of work performed.

After a quick Internet search I discovered that LaCoste and Charles Jourdan both have perfumes called Inspiration. I looked for dentrifices under the more common term, toothpaste, but could not find any other toiletries called Inspiration on the Internet. It does seem to be a better brand name than perspiration. Nevertheless, maybe Makiage will be able to have the mark cancelled eventually for lack of use.