A scratch line on a profile as a trademark indicating origin

February 11, 2016

If a design feature on a profile serves to indicate the origin of that profile, it may be registered as a trademark.

Israel trademark application 240319 filed by AL-SHURKAH ALWATANEYA LISENAET AL-ALAMENYOM WALPROFILAT (National Aluminum & Profile Co.) or NAPCO is such a mark.

240139

The mark, as shown above, was applied for aluminium profiles in class 6.

To some extent, the mark is reminiscent of the three-stripe Adidas mark, but it seems that the intention here is to monopolize a nonfunctional scratch like indentation anywhere on any profile as an indication of origin. Furthermore, if the scratch were to have a function, such as engaging a seal or the like, it could still infringe.

To avoid such problematic protection, the applicant clarified that the mark was a lengthwise 120 degree scratch on non-significant parts of the profile.

We assume that non-significant parts is to exclude such scratches that serve an aesthetic or functional purpose.

The applicant requested immediate fast-tracked examination as new requirements of the Israel Standards Office required manufacturers of products for sale in Israel to have registered trademarks identifying the goods.

After a hearing at the Israel Patent Office, the mark was allowed with the above clarification and disclaimer on 28 November 2012.

On 27 February 2013, Extal LTD filed an opposition, claiming that the mark lacked distinguishing characteristics as required by Section 8a of the Trademark Ordinance 1972 and was confusingly similar to their mark and thus was non-registerable under Section 11(13) and was thus against the public ordre, was not registerable under Section 11(5), would create unfair competition, false identification of the origins of the goods, dilution of Extal’s reputation and was thus not registerable under Section 11(6).

This scratch seems to have caused an awful lot of trouble.

The opposer, Extal, was established in 1988 and claims to specialize in developing, manufacturing, designing and marketing quality aluminium profiles. The firm is active internationally and in Israel, and has invested in advanced manufacturing equipment, automated storage and powder painting. In 2005 Extal bought up the reputation and IP rights of Mipromal. This and sales in 2011 and 2012 of hundreds of millions of Shekels are the basis of their claims to a wide reputation in Israel.

In 1988 the Opposer filed Israel Trademark Number 121163 in class 6. The mark appears as follows:

121163

The mark lapsed in 2006 due to failure to pay the renewal fees and was resubmitted in August 2011 and, following office actions, was split into two marks, Israel TM Application Numbers 253416 and 240117, each consisting of one of the elements above. Those applications were suspended pending this hearing. The Deputy Commissioner noted that scratches on the side of profile are standardized symbols for marking sections of extrusions, and the intention of the mark is a protrusion along a profile or an indention on a profile.

Extal claimed that the single scratch/protrusion has become well known in Israel and is marked on and identified with their products. The pending application is confusingly similar to their well known mark and is used to mark aluminium profiles with a triangular scratch along the profile. The distribution channels and target consumers are identical. Since the requested mark is recognized by the Israel Standards Institute as indicating that the goods come from Extal, allowing NAPCO to register the mark contravenes public order.

Extal alleged that NAPCO’s marks were filed in bad faith, since they were filed soon after their marks lapsed, and further alleged that NAPCO had filed false information.

NAPCO filed their statement of case on 14 April 2013 and denied most of Extal’s allegations but admitted that the two companies’ products were aimed at the same target audience in Israel. NAPCO claimed to have independently invented the scratch sign and to have used it since 1996, and for many years in Israel thereby developing a reputation for their products. NAPCO argued that Extal’s 121163 mark was neither a protrusion or a scratch and could not protect a scratch on an aluminium profile. To the extent that it could have provided some protection for whatever it protected, Extal had abandoned the mark. Furthermore, the publications supplied by Extal indicated that they were marking their goods, de facto, with a protrusion not an indentation.

Both sides filed numerous affidavits from employees and from people in the industry. The witnesses were cross examined in March and June 2014.

One of Extal’s arguments was that a lengthwise scratch along a profile is to minimal to serve as an indication of origin and was unacceptable under Section 8a of the Ordinance. We find this argument odd for Extal to submit since they were concurrently prosecuting a similar mark themselves. We think that the statement could fairly be used to estoppel their application.

That as may be, Ms Bracha noted that the Israel Standards Organization requires that profiles are marked. Since they are extruded in long lengths and then cut to size, a mark at one end or another is insufficient and manufacturers mark their profiles with (combinations of) protrusions and / or scratches. The Israel Standards Organization keeps a register of the various manufacturers marks but also requires the manufacturers to register trademarks. See Accumulated Regulations 7012, 30 June 2011 Section 2.2. The regulation came into effect for imported profiles on 30 November 2012.

Clearly the Israel Standards Organization regulations are not binding on the Israel Trademark Office which may refuse a mark considered as generic, as too similar to a competing mark, or for some other reason. However, the guidelines for examiners considering trademark profile markings as trademarks require them to take into account the Israel Standards Organization’s regulations when considering whether marks are inherently distinctive or have acquired distinctiveness. Thus the profile itself is functional or aesthetic and longitudinal scratches or protrusions (certainly on non-visible faces) serve as an indication of source.

There are a number of such marks with two or three indentations or protrusions such as 96177 (Extal), 96178 (Extal) 67008 Klil and 124975 (Extel). None of these have accompanying explanations.

NAPCO’s mark is a single scratch but it includes a clarification that “the mark is a lengthwise 120 degree scratch on non-significant parts of the profile.”  Thus NAPCO’s mark has inherent distinctiveness and is designed to distinguish its products from those of competitors.

The question remains whether it is indeed distinctive and whether it could create unfair competition.

Section 11(6) states that a mark that could confuse the public, falsely indicate the origin of goods or promote unfair competition may not be registered.

In this instance, the question is different from that discussed in the caselaw, such as 10959/05 Delta Lingerie vs. Tea Board China, 2006, and  the Safari Surf and Enrico Coveri cases, in that the pending mark is arguably confusable with a non-registered mark. As Seligsohn wrote in his Biblical Epic monumental Trademark and Related Laws, Shocken 1973:

A mark will be considered as a misleading mark if the public would be mislead to believe that it was the mark of another. The English Courts have dealt with this issue and ruled that a mark that is confusingly similar to one that have been registered may not be registered. However, the Israel Law does not differentiate between a registered mark and one not registered but well known. In both instances the Commissioner will refuse the mark if he believes that it will confuse the public into thinking that the mark is that of the third party. Before the Commissioner takes this step, he must be persuaded that the established unregistered mark is so well known in Israel that the public will assume that the younger application is the product of the owner of the established mark.

Extal is the largest distributor of profiles in Israel will 20% of the market. Their mark is well known. The argument centered on whether Extal had a reputation for a single line mark as they claimed, or only for a single protrusion as NAPCO argued.

The Deputy Commissioner was persuaded that Extal has a reputation for a single line mark among the relevant market and fulfills the requirements set down in 18/86 Phoenician Glass vs. Les Verreries de Saint Gobain, PD 45 (3) 225, 245-146.

There is no doubt that the original 121163 application was for scratches or protrusions as both were shown and the description was for a single line on a profile wall. Furthermore, a letter from the Israel Standards Organization appended to the file wrapper also related to a single line. Furthermore, the registration at the Israel Standards Organization was for a single protrusion or a single indentation.

The Opposer, Extal, attempted to register the two marks in one application in 2011, but the Patent and Trademark Office ordered the application split into two applications, one for an indentation and the other for a protrusion.

The opposer had a registration, lost it unintentionally, but has marked their products with a single line since the 1990s. They also had registered a design for a profile with a single line.

About half of the opposer’s product are sold to warehouses, traders or wholesalers. A significant proportion of the products are sold to window and door manufacturers and to industry. The relevant public are thus wholesalers and tradesmen.

Extal claims that 99% of their profiles are marked and that the calendars they distribute to their customers in 1994 stated “One line – the indication mark of Extal Profiles”. Their 1996 catalogue has the letters ID standing for indentification along various images, and pointing to a line that is generally a protrusion, sometimes an indentation and sometimes not clear. The catalogue even states: NOTE – Extal’s identification mark – a single line.

A further catalogue from 2006 states Micropramel and Extel’s marks are one or 2 lines stamped on the profile. [The Hebrew word used indicates stamped into, but doesn’t rule out embossed, since the word is that used for coin manufacture- MF].

Mr Yatom, testifying for Extal, argued that the choice of protrusion or scratch was left to the technicians and both were considered as indicative marks.

The Deputy Commissioner Ms Bracha notes that most images show a protruding line but some show an indentation and she concluded that the relevant audience would consider both as being Extal’s marks.

She was also impressed that despite testifying that he and others in the field could differentiate between the two suppliers’ products, A Mr Altif failed to identify the source of a sample as did other witnesses. Rather damningly, a Mr Masaroy who testified for NAPCO had trouble identifying his client’s goods.

From Mr Altif’s testimony it transpired that after painting, other marks were eradicated. It was difficult to identify the source of goods and one had to cross-check profiles with those shown on invoices. Sometimes functional or aesthetic lines were confused with those allegedly serving as indication of origin. In practice, additional indications such as delivery papers were used to identify batches. He also indicated that there was a problem with fake imports on the market.

Although the registration had lapsed, the mark was still in use and was refiled a day before this case that is being opposed. Extal expressed doubts that NAPCO was using their mark.

Extel sent private investigators to eight distributors and, without relating to scratches or protrusions, these asked workers about Extal and NAPCO’s products and marks. The conversations were submitted as evidence. Whilst noting that the investigators knew what was expected of them, the Deputy Commissioner did not feel that they had concealed information as alleged by NAPCO . As transcripts and tapes were submitted, there was no need to submit a report. That said, the Opposer chose the distributors to send the private investigators to and could select companies that they had a good relationship with. Despite certain reservations about the private investigation, the Deputy Commissioner felt that the Opposers’ mark was well known and that they were considered as being a single stripe, without differentiating between protrusions and indentations.

As to Applicant’s good faith, it is noted that although they claimed usage of the 120 degree indentation from 1996, they do have other marks in use. The opposed mark was only registered with the Israel Standards Organization from 2013, which is AFTER the Applicant was aware of the Opposer’s claims to the mark. The marks were filed almost simultaneously but NAPCO requested accelerated examination. This and the large difference in market share indicate that NAPCO may have been acting inequitably.

NAPCO ‘s choice of mark remains unclear, but regardless of whether the mark was requested in bad faith, in practice it is confusingly similar to the Opposer’s mark and thus cannot be registered.

Since the mark is refused under Section 11(6) as potentially confusing the public, whether or not the Opposer’s mark is a well known mark under Section 11(13) is moot.

Nevertheless, although perhaps not a well known mark in the sense of Section 11(13) Extal does have a reputation in the industry.

The Opposition was allowed and the mark canceled. Nevertheless, as the Opposer had not filed clear marks and had not maintained their marks they were not entitled to full damages. Had the opposer’s mark been properly registered the applicant’s mark would not have been allowed and thus the opposition proceeding would have been superfluous. Showing a reputation in a non-registered mark made this opposition particularly difficult as it made it necessary to bring evidence of reputation and of Applicant’s bad faith in registering the design.

A firm claiming to be a market leader should be more professional in registering its marks to prevent a third party registering them. Similar considerations are true for the registration with the Israel Standards Office as well.

The parties’ behaviour in the proceedings and the intermediate rulings and cross-examinations and interference are also taken into account. Thus costs of 5000 Shekels including VAT are deemed appropriate.

COMMENT

At a Patent Conference at Bar Ilan University recently, the Commissioner of Patents and Trademarks discussed the pending design law and noted that designs were being used to protect extrusion profiles.

That as may be, although scratches seem to be odd types of trademarks, it is not easy to permanently mark extrusions to indicate origin. Furthermore, apparently the first makers’ marks were scratches and the like on pieces of armour.

The issue of non-functional elements in an extrusion serving as a trademark has been discussed by the Israel Patent Office before see here.

The prime example of case-law in Israel concerning a well known but non-registered mark is the Chanel ruling of 1950, where some Israeli market his products Chanel and the well known brand Coco Chanel had not registered their marks in Israel. Another case of interest is the Versace saga here, here and here. I don’t think that the single scratch/protrusion is that well known. Extel has at least two other registered marks for two triangular scratches, two triangular and two domed protrusions, implying that the single triangular scratch can at best be one of several lines. Nevertheless, it may well be a recognized marking in the industry.

It seems that this whole case hinged around the issue of whether Extal had a reputation for a single line or for a single protrusion, and whether, if only for a single protrusion, whether the two are confusingly similar. There is no doubt that ten or twenty years ago Extal was claiming a reputation for a single line or stripe, but that is not the issue. Nor is the registration at the Standards Institute. The issue is what people in the industry see as being Extal’s mark. The Israel Patent Office, by requiring Extal’s application to be split, has already determined that a scratch and a protrusion are not the same. The private investigator’s testimony was less than satisfactory. Indeed, NAPCO attempted to get it struck from the record – see here. I note that the sorely missed UK IP Judge from Golders Green, Hugh Laddie, apparently did his own market research when considering likelihood of confusion, such as with the Burton fashion brand. I wonder if Ms Bracha could have usefully visited one of the many wholesalers in Talpiot or Givat Mordechai, or sent an Examiner, and thus determined first hand, whether Extal had a reputation for a single scratch line or not. Certainly one doubts that calendars from 2006 are being referred to, even if some may still be hanging on walls somewhere.

 


Large Consignment of Fake Plumbing Components Destroyed at Importer’s Cost

February 10, 2016

huliot

When one thinks of fake goods, luxury items such as Rolex watches and perfumes spring to mind. Software and music is also copied and distributed easily, but one doesn’t think that anyone would fake plumbing materials.

Actually, fake light switches, plasterboard, aluminium profiles and plumbing materials are made.  Huliot Have now managed to have a large consignment of 88,000 fake plastic plumbing components destined for Gaza destroyed in Ashdod Port at the importer’s cost.

Huliot a long established manufacturer of pipes and plumbing components based at Kibbutz Sde-Nehemiya.

A few months ago, the Customs Office at Ashdod port compounded a large consignment of counterfeit plastic plumbing components imported from China and destined for Gaza.  The plastic components had the registered trademarks of Huliot A.C.S. Ltd embossed on each component and were also packaged in packaging bearing Huliot’s name and distinctive green diamond logo.

The Customs Office were suspicious of the large consignment because the goods appeared to be of low quality so IP Factor who is the registered Agent of Huliot trademarks was contacted by the Customs Office. We take this opportunity to complement the Ashdod Customs for their vigilance in this matter.

Adv. Aharon Factor of our firm, IP Factor, filed a petition at the Tel Aviv District Court for a restraining order and for an order for the destruction of the goods.  The parties subsequently negotiated an out-of-court settlement further to which the goods were destroyed at the importer’s expense and some legal costs were paid by the importer to Huliot.

Huliot’s CEO Mr. Paul Steiner believes that the large consignment has a retail value of about 400,000 Shekels and would have tarnished Huliot’s reputation for high quality products.  Although destined for Gaza, Mr Steiner believes that some of the goods would have found their way back to Israel which would have caused even more damage to Huliot’s reputation.

Mr Steiner is a great believer in IP development and enforcement and engages veteran Israel Patent Attorney Simon Kay as part-time in-house IP Manager. Simon has developed a vigorous strategy to protect the company’s intellectual property and reputation, including patenting developments, registering the designs of new components, marking components and their packaging with Huliot’s logos and trademarks.  IP Factor handles the trademark portfolio for Huliot and for some of Simon’s other clients.

COMMENT

In a recent post we noted that suppliers of fake Viagra pills had received prison sentences since the product posed a danger to the public. We noted that most fake Viagra pills are merely ineffective rather than dangerous. Fake building materials can cause tremendous damage. Sewage and grey water piping that cracks can contaminate drinking water supplies. Whilst untreated individual erectile dysfunction can adversely affect reproduction, cholera can kill millions. One of my clients has developed and is launching a child safety device for adjusting car seatbelts to children. The device has undergone very extensive safety testing. Fake devices are now being advertised on Chinese wholesale websites. Quite possibly, these are inferior and unreliable products. Perhaps the courts and police should reconsider what types of fake goods are dangerous and what importers and distributors should be sent incarcerated?


Co-op Shop

February 10, 2016

Co-opshop

Co-op Israel Supermarket Reshet Ltd. filed Israel Trademark Number 244529 for Stores, supermarkets, management and operation of stores and supermarkets,advertising; all included in class 35. The mark was filed in February 2012.

Back on 19 May 2013, the Examiner decided that the mark could not be registered due to Section 11(9) objections.

ON 8 August 2013, the Applicant responded that the prefix Coop was an established abbreviation of Cooperation and that the term Coopshop was descriptive. Since the mark was stylized it should be examined in its entirety and there was no likelihood of confusion between the requested mark and those registered.

On 29 October 2013, the Patent and Trademark Office upheld their objection arguing that the mark was identical sounding and visually similar to  83846 and 98967 reproduced below.

Coop  (Co-op in Hebrew).

and Super Coop(Super-Co-op in Hebrew).

which were both registered for retail stores and services in class 35.

Due to the similarity of the marks and of the services covered, the trademark office was not prepared to allow coexistence, and in response to the Applicant’s claim that the marks were not in use, the Examiner suggested that Applicant file cancellation proceedings.

The Applicant claimed that the marks were not in use for over a decade, denied that they were confusingly similar and requested coexistence under Section 30(a) of the Law.

On 6 November 2014, the Trademark Department reiterated that coexistence was not possible due to similarities risking confusing the public and that if the registered marks were indeed no longer in use, the Applicant could initiate cancellation proceedings.

The applicant requested an oral hearing.

At the start of the hearing, the Deputy Commissioner Ms Bracha ruled that a copending mark 244530 as shown below, could be registered since she did not think it would be confusing to the public.

Coopshop

RULING

The question is whether the proposed mark is confusingly similar to those previously registered.

Coop  (Co-op in Hebrew).

and Super Coop(Super-Co-op in Hebrew).

The Deputy Commissioner applied the well known (5 point) triple test:

  1. Appearance of mark
  2. Sound of mark
  3. Type of goods
  4. Distribution channels
  5. Everything else.

Most weight was given to the sight and sound of the mark. The marks are considered in their entirety as perceived by the consumer, but weight  is given to the prominent and dominating features thereof. See Seligsohn, 1973.

Audibly, the marks include the element coop, but this is only part of the sound, and the comsumer does not think of the elements, but of the totality.

When considering the appearance, one cannot ignore the graphic styling and the suffix ‘shop’. The mark is two tone, with ‘Coop’ in a darker blue than ‘shop’, with the holam (vowel dot) in red. The TM 83846 mark is a row of five squares, with the word Coop in a different shade of blue in the middle three and in white on the outer squares. The TM 83846 mark is a dark blue rectangle with the words ‘Super Coop’ written in white thereon.

There appears to be a slight difference in font between those of the registered marks and the pending mark, but this is only noticeable when comparing them side by side. The TM 83846 mark is a similar shade of blue and the fonts are similar, though not identical.

As the words comprise descriptive elements, and the woed ‘shop’ is descriptive to the point of being generic, the consumer will focus on the distinctive element of the marks, which the Examiner considers to be the colour scheme, and supports this from paragraph 21 of the Tim Tam ruling.

Citing   “Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 313

“The public will not generally consider a descriptive element forming part of a complex (or composite) mark as the dominant element of the overall impression created by the mark; it is the dominant elements of the marks that are critical in the overall evaluation, although it is only if all the other components are negligible that the assessment can be carried out solely on the basis of the dominant elements.”

The applicant claims that the word Coop stands for cooperation and is thus also descriptive. The marks have to be considered in their entirety as logos. The Applicants’ assertion that the word coop should be ignored when comparing the marks is unreasonable. See 1677/05 Deutsche Telekom vs. E” Entertianment television, where T-Online and E! Online were considered confusingly similar due to the common dominant if generic-descriptive word, but the word E! was considered distinctive in the local market.

As to the rest of the mark, citing J. Thomas McCarthy McCarthy בספרו on Trademarks and Unfair Competition (2008) on pages 23-202:

“The Federal Circuit holds that a descriptive or generic portion of a composite mark is to be given less weight on the rationale that the public will look to other portions of the marks and will not be confused unless the other portions are similar. In this case, the other portions were similar and likely confusion was found.”

This the similarity or difference of the first part of the word has to be considered from the consumer’s perspective.

Ms Bracha considered that the marks looked and sounded similar.

Both companies were general grocery retailers and so the customer group was the same. The Applicant argued that each store was in a different location, but the Deputy Commissioner was not prepared to give this distinction much weight.

As to other considerations, the Applicant argued that there was no likelihood of confusion as the registered marks were not in use. The Deputy Commissioner ruled that marks were an asset and could have economic value and again cited Kerly (page 12) which referred to a European Court Ruling:

“In addition to its function of indicating origin and, as the case may be, its advertising function, a trade mark may also be used by its proprietor to acquire or preserve reputation capable of attracting consumers and retaining their loyalty.”

 The Deputy Commissioner noted that marks could be transferred, used as liens and traded,  and thus had value so was not prepared to empty the marks of value by allowing similar marks merely because they were not actively being used, and again noted that the Applicant could actively seek the marks cancellation on the basis of non-use. Furthermore, the TM 83846 mark was renewed as recently as 27 June 2013 implying that its owner saw value in it, had not abandoned it and might start using the mark or sell/lease it to a third party.

In conclusion, Ms Bracha could not accept TM Application Number 244529 in light of the 83846 and 98697 registrations.  As Applicant claims that the registered marks have not been in use for over three years he is given a three month window to file a cancellation proceedings and if he chooses to do so, the Examination of this mark will be suspended pending the results of that hearing. Otherwise, this mark will be cancelled.

Ruling Re Registerability of Israel Trademark No. 244529 for Coopshop, Ms J Bracha, 31 January 2016. 

COMMENT

I would have assumed that the term Coop was short for cooperative and not cooperation. However, the Applicant is being represented by a UK born and educated lawyer so I could be wrong (though suspect he is).

That as may be, I am very surprised that the Deputy Commissioner refused the mark whilst allowing a similar mark with the addition of a stylized shopping cart as sufficient to render the mixed stylized word and logo mark distinctive. I consider a shopping trolley or cart is about as generic as things can get for supermarkets. The additional wording “Our Supermarket” in a smaller font is hardly redeeming.

I note that the Coop, Blue Square etc. was bought out by the Mega supermarket chain who are currently under receivership. It could be that this while ruling is just a little premature. Indeed, as I think the mark is very week, I’d have advised the Applicant to buy up the established marks and the associated rights.

 


361

February 8, 2016

361

Dalitex LTD own Israel Trademark Numbers 192322, 102323 and 192324 all for stylized marks for “361” as shown. The mark covers Protecting clothes (vests) and bullet proof vests; all included in class 9; Bags, including rucksacks, backpacks, carrier bags, suitcases and pouches; all included in class 18, and Clothing and footwear, including shoes and socks, coats, storm suits made of cloth and synthetic materials such as nylon and polyester; headgear; all included in class 25.

Sanliuyidu (Fujian) Sports Goods Co LTD filed a cancellation proceedings on 26 October 2015, using the address of record in the register.

The period for responding as per regulations 37 and 71 of the 1940 Trademark regulations passed and the mark owners did not respond.

Consequently, Sanliuyidu (Fujian) Sports Goods Co LTD have two months to file their evidence and then are entitled to a hearing, and are requested to inform the Patent and Trademark Office if they intend having such a hearing.

Interim Decision re Israel Trademark Numbers 192322, 102323 and 192324 “361”, Ms Jacqueline Bracha, 14 January 2016.

 


Angel’s Bread

February 8, 2016

Angelbread

No, this decision has nothing about Bread of Heaven which is more formally known as Cwm Rhondda, or even about Manna, the fabled bread eaten by the Israelites after the Exodus from Egypt on the way to the Holy Land.

Shlomo A. Angel LTD in Jerusalem is Israel’s largest bakery, and is also the largest bakery in the Middle East. It supplies 275,000 loaves of bread and 275,000 bread rolls a day. The bakery also carries a range of 250 cakes and biscuits, including roggeluch, of course.

There is a smaller bakery called Engel Y. Pattisserie and Baking Goods LTD.
The two bakeries each submitted trademark applications that included the word angel or engel in Hebrew  (אנגל) where vowels are not written, and whether a g is a soft g as in giraffe or a hard g as in gamma is generally indicated by a dagesh or dot in the letter but also not shown in words printed without vowels. Actually, Yemenites are the only group that pronounce the jalet sound in regular Hebrew. Angel writes their name with an apostrophe indicating that it is a foreign word, pronounced Anjel.

Due to possible likelihood of confusion regarding the origin of good thus marked, a competing marks procedure under Section 29 of the Israel Trademark Ordinance is called for. Under Section 29, the Israel Patent Office considers the application dates, the extent of usage and the equability or otherwise of the behaviour of the applicants in order to determine whose rights are stronger and which marks should be examined first. Only then, is the eligibility of the mark under Section 11 considered.

In this instance for some reason, probably a mistake on the part of the Trademark Division, b0th competing mark objections and substantive objections based on previously registered marks were raised against the applications submitted by Angel Y. Pattisserie and Baking Goods LTD.

Shlomo A. Angel LTD’s representatives suggested that it would be more efficient to consider the eligibility of the marks first, and only then, if both marks are considered eligible, to have the competing marks procedure to consider which applicants pending marks should be registered first.

The advantage of first looking at basic eligibility is to avoid wasting time and resources on a competing mark decision only to have the prevailing mark then refused. However, the problem with this approach is two-fold. Firstly, even if one or both pending marks are considered eligible sans consideration of the other competing mark, once the competing mark procedure is initiated, the mark that wins that procedure can then be cited against the other mark, so the substantive examination occurs twice. Secondly, having a hearing to decide whether to follow or deviate from procedure is itself time-confusing. Nevertheless, if both parties agree, it may make sense.

In this instance there was no consensus between the parties, to suspend the competing marks procedure and to first examine the marks themselves. This leads to the question of whether it is ever legitimate to deviate from the procedure set out in the relevant Patent Office Commissioner’s Circular, and to decide on registerability first, and competing marks issues afterwards.

In this instance, both bakeries filed a number of trademark applications which were copending.  On 26 May 2014, Shlomo A. Angel LTD filed Israel TM Application Number 265729 for Conditoriat Angel (A conditoria קונדיטוריה is a patisserie in Hebrew, so this means Angel’s Patisserie). The mark covers flour, grain products, bread, baked goods, sweets, yeast and baking powder in class 29. On 19 October 2014, Shlomo A. Angel LTD filed Israel TM Application Number 269159 and 269160 for Angeli and Angelino for the same list of goods.

On 24 November 2014, Conditoriat Engel Y. Baked Goods LTD. Filed Israel TM Application Number 269996 for Engel Cookies in class 29, also covering flour, and grain based goods, baked goods and sweets and Israel TM Application Number 269997 for the same goods.
In addition to the competing goods procedure, Section 11(9) objections were raised against Conditoriat Engel Y. Baked Goods LTD. on account of earlier marks to Shlomo A. Angel LTD that included Angel’s Bakery Jerusalem, Angel Oranim, Women’s light bread, phyto bread, Angel’s bread in the French style and Angel 100. So if Conditoriat Engel Y. Baked Goods LTD.’s marks were to win the competing marks procedure and be examined first, they could subsequently be refused on grounds relating to previously registered marks owned by Shlomo A. Angel LTD.

The competing marks procedure is thus arguably flawed in that it relates to co-pending marks without taking into account previously issued marks.

Shlomo A. Angel LTD requested that the applications filed by Conditoriat Engel Y. Baked Goods LTD should be first examined on their merits, possibly rendering the competing marks procedure moot.

Conditoriat Engel Y. Baked Goods LTD disagreed. They requested that the competing marks procedure should occur first, as per the relevant circular, since the competing marks procedure started by the commissioner indicates an assumption of validity on the merits, citing BAGATZ 228/65 Fromein and sons vs. Pro Pro Biscuits from 1965, which was based on Section 17 of the old ordinance which corresponds to section 29 of the current version. There is was stated:

“the question of which of the competing marks takes precedence for examination, is a court ruling that is final, whereas the question of registerability, is one that at that stage, the Commissioner neither made or was able to make. Deciding which mark is preferable in the competing marks proceeding is “subject to other requirements of the law”. Thus a section 17 (now 29) proceeding does not determine which mark is registered, it is based on a working assumption that marks are registerable…”

The Commissioner did not consider that Fromein was relevant to the current case. In Fromein, the side prevailing in the competing marks procedure was examined first, allowed for publication and then successfully opposed. The issue was whether the proceeding marks ruling was to be understood as indicating that the mark was otherwise allowable and the answer was that it was not. In Fromein, the Commissioner’s competing mark decision was not based on consideration of the mark on its merits and does not indicate that the mark was otherwise allowable. Furthermore, citing BAGATZ 450/80 EL Khadaer, “there is nothing to prevent the Examiner preferring one mark to be examined first under a Section 29 proceeding when, based on the evidence, he does not consider either mark may be registered on its merits. This indicates that the Examiner CAN choose to examine the marks on their merits within the Section 29 procedure. This also indicates that despite a question regarding registerability on the merits of one of the marks having been raised, the Commissioner may choose to continue to discuss which mark takes precedence.”

Nevertheless, the Commissioner was not happy about allowing one mark to take precedence in a competing marks procedure to have the other mark refused, if subsequently the mark taking precedence were to be refused on its merits requiring the other party to resubmit and cited the competing marks ruling regarding 1667390 and 166845 Ilan Danino vs. Keshet Transmissions LTD from 26 December 2005 which came to a similar conclusion.

Clearly, it is inefficient to hold a competing marks ruling only to subsequently refuse on its merits the mark that takes precedence. The Circular allows the parties the opportunity to agree for a preliminary ruling on the registerability of the marks, and this assumes that where the parties do not have strong contrary feelings, such an eventuality will occur, and where there are earlier registrations, the issue of distinguishing features will be considered.

However, as occurred in this case, where one party’s earlier marks were cited against the pending mark and a Section 29 proceeding were initiated together, the parties have different interests regarding the order of proceedings and may not agree.
Reserving the right to raise registerability issues before himself, instead of before trademark examiners, the Commissioner ruled that the section 29 proceeding should take place but before other issues are addressed, Conditoriat Engel Y. Baked Goods LTD were given 30 days to respond to the registerability objection based on the earlier Angel’s marks. Furthermore, to avoid things being dragged out, no extensions to the substantive examination would be allowed apart from in exceptional cases.
Ruling by Asa Kling, Angel vs. Engel, 24 January 2016.

COMMENT

This is not a bad decision from a procedural point of view, but it does not really address any of the questions. The issue is efficiency for all concerned, so why not revise the Circular to give the patent office authority to initiate a competing marks procedure earlier or later in the examination depending on previously registered marks?

Alternatively, why not decide whether or not a proceeding marks procedure is warranted BEFORE issuing objections on other grounds?


Soulstar

January 20, 2016

S & P Casuals LTD filed Israel Trademark Application No. 262293 for “Soul Star”. The mark covers Clothing, footwear, headgear; designer clothing; clothing, namely, shirts, T-shirts, trousers, jeans, pants, shorts, tank tops, skirts, blouses, dresses, jackets, coats, sweaters, sweatshirts, jogging suits, rainwear, hats, caps, sun visors, belts, scarves, sleepwear, pyjamas, lingerie, underwear, boots, shoes, sneakers, sandals, booties, slipper socks and swimwear all in class 25 and is a national entry of an International trademark filing under the Madrid Protocol.

The mark published as allowed on 30 June 2015, and on 6 October 2015, Soul Cycle Inc.  opposed the mark. S & P Casuals LTD do not have local representation, but details of the opposition was sent to them by the International Office of WIPO. The period for responding has passed and the Applicants did not respond. They are therefore considered as having abandoned their mark and in view of the material in SoulCycle Inc.’s statement of case, costs of 3000 Shekels are awarded to them.


IPad Mini, IPad Air and MI Pad

January 20, 2016

Apple Inc filed Israel Trademark Application Number 261500 for IPAD MINI and Israel Trademark Application Number 261449 for IPAD AIR on 12 November and 20 November 2013. both in class 9 for Handheld mobile digital electronic device comprising a tablet computer, electronic book and periodical reader, digital audio and video player, camera, electronic personal organizer, personal digital assistant, electronic calendar, and mapping and global positioning system (GPS) device, and capable of providing access to the Internet and sending, receiving, and storing messages and other data.

Subsequently, on 14 May 2015, Xiaomi Singapore Pte. Ltd filed Israel Trademark Application Number 270078 for Mi Pad. The mark covers Portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks; tablet computers, electronic book readers, periodical readers, digital audio and video players, digital camera, electronic personal organizers, personal digital assistants, electronic calendars, mapping and global positioning system (GPS) devices; computer peripheral devices; computer and portable and handheld electronic device accessories, namely, monitors, displays, keyboards, mouse, wires, cables, modems, disk drives, adapters, adapter cards, cable connectors, plug-in connectors, electrical power connectors, docking stations, charging stations, drivers, battery chargers, battery packs, memory cards and memory card readers, headphones and earphones, speakers, microphones, and headsets, cases, covers, and stands for portable and handheld electronic devices and computers; computer software for the development of content and service delivery across global computer networks, wireless networks, and electronic communications networks; downloadable audio works, visual works, audiovisual works and electronic publications featuring books, magazines, newspapers, periodicals, newsletters, journals and manuals on a variety of topics; computer software for transmitting, sharing, receiving, downloading, displaying, transferring, formatting, and converting content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works via portable electronic devices and computers; computer game programs; downloadable music files; downloadable image files; video telephones; navigational instruments; screens [photoengraving] in class 9 and Telecommunication access services; communication by computer; transmission of data and of information by electronic means, broadcasting or transmission of radio and television programs; provision of telecommunications connections to computer databases and the Internet; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; web casting services; delivery of messages by electronic transmission; streaming of video content, streaming and subscription audio broadcasting of spoken word, music, concerts, and radio programs, broadcasting prerecorded videos featuring music and entertainment, television programs, motion pictures, news, sports, games, cultural events, and entertainment-related programs of all kinds, via computer and other communications networks; providing on-line bulletin boards for the transmission of messages among computer users concerning entertainment in the nature of music, concerts, videos, radio, television, film, news, sports, games and cultural events; communication services, namely, providing users access to communication networks for the transfer of music, video and audio recordings; teleconferencing services; providing Internet chatrooms; voice mail services; transmission of digital files.  in class 9.

Since Apple Inc.’s marks have not yet issued, a competing marks procedure was instituted and both parties are invited to a hearing before Ms Jacqueline Bracha on 1 February 2016 to states their cases.


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