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February 25, 2015

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Clip Fresh Ruling Upheld On Appeal

February 25, 2015

clip-fresh

Back in July 2014, the Israel Patent Office allowed the Clip Fresh logo mark of Farm Chalk LTD to be registered despite an opposition from earlier registered ‘Click and Fresh’ to Millennium Marketing Intertrade (1999). The Examiner considered the likelihood of confusion to be unproven. See here for more details.

Millennium Marketing Intertrade (1999) appealed the decision and the decision regarding costs (reduced from 92,932 Shekels to 80,000 Shekels) to the Tel Aviv District Court under the Right to Appeal.

They considered that despite the different appearance of the marks, when the sound of the mark is considered, there is a likelihood of confusion.

Furthermore, “By Farm Chalk” –which appears in the mark, was never actually used, rather the mark holder used the slogan “Keep it Fresh”, so the decision to allow the registration on the grounds that the words By Farm Chalk prevented confusion should be reversed.

.The Appellant argued that the F of Fresh looks like an ampersand (&) and the mark holder simply adapted their mark and was confusingly similar in appearance. Furthermore, the costs of 80,000 Shekels were disproportionate to the work involved in the opposition.

The mark holder argued that the Appeal should have been filed within 45 days and was actually filed 4 months after it issued and so should be thrown out. Furthermore, the Click and Fresh mark only issued after disclaiming the descriptive words ‘click’ and ‘fresh’ and so cannot be considered misleading the public as to the source of the goods. The costs were not much different from costs awarded in other cases and Appeals to reduce costs should only be accepted in extreme circumstances.

The appeal was filed within 45 days of the costs ruling though not within 45 days of the main ruling. Judge Yehudit Shnitzer considered that the costs of 80,000 Shekels were indeed significant and could be grounds for deciding to file an appeal. She therefore was prepared to review the case and rule on its merits.

As to the phonetic similarity, Judge Shnitzer considered that food containers are not bought by requesting the goods by brand over the counter, but by picking up and examining the goods. She therefore considered that the difference in visual aspects of the marks outweighed the similarities in sound.

Neither mark would have issued for the words, only for the stylized logo. In an appeal regarding the registration of a mark there was no room to consider whether the mark was actually used as registered, since this was a separate ground for canceling a mark after a period of time, but not within the scope of the appeal. Since the click and fresh registration only issued by disclaiming the words ‘click’ and ‘fresh’, the protection afforded by the sounds of these words is very limited.

The marks have to be considered in their entirety, with the emphasis on the visual aspects not the audible ones, and noting similarities in disclaimed words, but not giving such disclaimed words much weight.

As there are a lot of similar goods on the market, someone interested in a specific brand would be expected to take care.

It is important to prevent trademark abuse and policy dictates having to avoid trademarks providing an effective monopoly on goods having certain characteristics, rather than serving as an indication of source. Allegations of free riding, unfair competition and confusing the public were rejected in favour of free competition.

As to the costs awarded, Judge Shitzer noted that the costs were based on actual cost submissions and were calculated and not random. She accepted that there were cases with a single hearing and no witnesses from abroad where the costs awarded were much lower. She did not, however, consider the costs to be outrageous and did not see fit to interfere.

After ruling to reject the Appeal, Judge Shitzer awarded a further 30,000 Shekels costs against Millenium Marketing Intertrade (1999).

Appeal to Tel Aviv District Court 27992-08-14 Millenium Marketing Intertrade 1999 vs. Farm Chalk Investment LTD. Concerning Israel trademark opposition ruling concerning Farm Chalk’s stylized graphic mark by Asa Kling, the appeal ruling by Judge Shnitzer, February 2015    

COMMENT

This decision vindicating the Commissioner’s ruling is correct. I think that the decision also shows that Ms Yaara Shoshani-Caspi’s ruling re Humus B’Ribua is wrong.


Humus Squared!

February 22, 2015

humus b'ribua

Humus b’Ribua, (literally Humus squared, or Humus in a square) filed Israel trademark no. 250521 on 28 October 2012 for catering services.

The mark is shown above. For those not familiar with Hebrew, the mark consists of the words Humus b’Ribua, (literally Humus squared, or Humus in a square) followed by, in smaller letters, to wipe the corners, the whole written over a square background.

On 17 March 2013, a company called Humus b’Ribua LTD, (literally Humus squared, or Humus in a square) opposed the mark. Humus b’Ribua filed their counter-statement of case. Both sides filed evidence and a hearing was held before the Adjudicator, Ms Yaara Shoshani Caspi.

 

The owner of the Humus B’Ribua mark, Mr Pivnik, claimed to be familiar with the legal issues and chose to handle this without legal representation.

The mark Humus B’Ribua is intended to be a franchised chain of restaurants.

The Opposer, Guy Yakar, owns a chain of felafel outlets, Felafel b’ribua that sells Israel fast food, including falafel and humus. The chain was set up in 1995 and sells square felafel balls cubes through 10 outlets. The Felafel b’ribua logo (TM 150166) is shown below.

Felafel B'ribua

In addition, on filing the opposition, Guy Yakar and Felafel b’ribua submitted a further trademark application (TM 254346) as follows:

felafel b'ribua 2

In addition to mentioning Felafel b’ribua, the mark includes the Hebrew words for “manufactured from Humus since 1995″.

For those not familiar with these Middle Eastern fast foods, Humus is the Arabic and Hebrew word for chickpeas. Humus is served as a paste made from boiled and then mashed chickpeas. It is often flavoured with Tehini, which is a paste made from sesame seeds. Felafel are chickpea cutlets, balls (or apparently cubes) of course chickpea paste that may also include breadcrumbs, and are deep fried.

Felafel B’ribua claimed confusingly similar marks.

They claimed that they are a successful chain of fast food outlets whose main products are hummus paste and falafel, both made from hummus (chickpeas). They noted their established mark, which they asserted was in use from prior to registration in June 2001. They argued that their second mark, though filed in March 2014, was part of a branding and marketing campaign from 2011, and supported this with a write up from Idiot Achronot, invoices from a publicity agent and photos of signs and adverts. They claimed to spend hundreds of thousands of shekels a year on advertising. Felafel B’ribua further claimed that about 50% of their sales came from humus sold as humus paste (and not as falafel), however because of the confidential nature of the information, no evidence was submitted to back this claim. To support their claim of a likelihood of confusion, Felafel B’ribua produced two examples of actual customer confusion.

Humus b’ribua denied the similarity. Mr Pivnik claimed to have set up his chain of humus outlets in 2011, where humus is vended in an original shape that he’s conceived. His product is humus on a square plate and he’s never intended selling square falafel or to pass himself off as Felafel b’ribua.

He further claimed to have spent a lot of time and money in developing his recipe and marketing the brand. Finally, he noted changes made to the logo to differentiate toastnik b’ribua, now issued as TM 252402.

The Ruling

The Opposition is based on Sections 11(6), 11(9) and 11(13) of the Trademark Ordinance.

Claims of dilution unfair competition and of the mark being a well known mark were dropped, so the ruling depends on the whether the marks are confusingly similar or not.

Section 11(9) states that identical marks for similar goods or for goods in similar classes, and for confusingly similar marks are not registerable.

The logic behind Section 11(9) is to protect the registered mark owner from losing customers due to confusion, and to prevent customer confusion.

The likelihood of confusion is determined by the triple test, where the first strand (sight and sound of the mark) is given more weight than the distribution channels, clientele and other considerations.

The word B’ribua is identical. Whether or not the words felafel and humus, and the additional phrases concerning wiping, etc. are sufficient to distinguish between the marks requires the other tests, i..e consideration of the distribution channels, clientele and other considerations.

Ms Shoshani Caspi accepts that the two foods are considered related local Middle Eastern fast food and that felafel contain humus. In addition, she was convinced that the requested mark would lead customers to consider that the two chains had a common owner with a common culinary consideration, since one sold square felafel and the other sold square plates of humus.

The customer pool for the two chains is substantially identical.

The terms humus and felafel are generic and descriptive and cannot therefore be used to differentiate between the two chains. The superscript 2 simply implies ‘squared’.

Ms Shoshani-Caspi considered that the average consumer with an imperfect memory would be likely to be confused. The catch phrase about wiping the corners, or made from humus would not serve as branding and are swallowed up in the overall design, as are differences in font.

The Felafel B’Ribua chain is well established and well publicized. Mr Pivrik apparently acknowledged that the opposer had thought up square felafel balls. Were the brand to be square falafel, it would be considered descriptive. Squared does not imply larger portions and is no laudatory.

In her ruling, Ms Shoshani Caspi ruled that the marks were indeed confusingly similar and so refused to allow the Humus b’ribua mark to be registered. She further awarded costs and 5000 Shekels in legal fees to Humus B’ribua.

 Re Israel TM 250521 “Humus b’ribua” to Pivnik, Opposition by Guy Yakar (owner of Felafel b’ribua) ruling by Ms Shoshani-Caspi, 6 January,  2015

COMMENT

squares that look round

squares that look round

I suspect that I am not the correct consumer to decide whether there is a likelihood of confusion as I am unlikely to be tempted by either chain, and see both foodstuffs as generic. Nevertheless, I think that marks should be considered in their totality, not analyzed as their parts. The word humus does not sound like felafel. Despite their common ingredients, the two words connote different products. I therefore don’t think that there is any likelihood of confusion.

If one chain called itself Felafel Meruba (Square Felafel) and a competitor chose the name  Felafel B’Ribua, there would be a case to answer for. The terms sound similar.  However, felafel does not sound like humus and these words are dominant in the company names.

Despite the Israel Supreme Court decision re Apropos (General Mill’s Bugles), I disagree that because Felafel Meruba (Square Felafel) is descriptive and thus can’t be trademarked since Felafel cubes are non-standard shaped.

There is a chain of bagel outlets called Holy Bagel. This is a play on words reflecting the fact that the chain is centered on Jerusalem and that bagels have a hole. I think that Hole Bagels, Whole Bagel and Holey Bagel are confusingly similar. Holy Felafel, Holy Pizza are not.

 

 

 

 


Wishing Our Asian Clients a Happy New Year

February 17, 2015

billy goats gruff

 

We wish our Asian associates and clients a Happy New Year of the Goat, and hope that patent trolls get what’s coming to them!


Registering Designs for Garments

February 9, 2015
Fashion is an industry where the innovator benefits from a lead time as first mover, but most manufacturers follow trends and though designs may be registered, usually they are not. Copyright may protect exact copying, but generally this is also not an appropriate tool.
Recently, the international fashion brand Diesel, represented by Adv. Daniel Freimann, managed to obtain an injunction against Israeli clothing retailers Hoodies for copying a design of jeans.
Diesel's jeans are shown here:

 diesel from front  diesel from back

Hoodies jeans are shown here:

hoodies from front   hoodies from back

Diesel’s design has a high waist, are form hugging and have stitching extending from the bottom of the pockets, at the knees and at the back of the legs.  

This stitching detail is somewhat unique. Hoodies claimed that their jeans were not a copy, and were considerable cheaper and noted that the decorative stitching on the back pocket was somewhat different. They also argued that the Diesel’s design was for blue and white jeans only. The judge accepted that the back pocket stitiching was different, however, since Hoodies’ jeans had the same basic shape and included such stitching. 

Diesel had filed design applications (nos. 50526 and 51929 and claimed 11 and 9 novel features respectively. Hoodies argued that their jeans did not have all the elements. The judge considered that the issue is one of the impression of the garment as a whole and not one of analyzing novel features against a checklist. 

Hoodies accepted that Diesel had a reputation, but not one for the specific design. Since their jeans were sold at about 15% of Diesel’s prices and since the design was not well known, there was no case of passing off or likely consumer confusion. 

As to the registered design, Hoodies claimed that prior to it being filed, the jeans were on sale, so the design registration was void.

Judge Yaakov Shepser of the Central District Court noted that despite the differences, Hoodies had produced no evidence that there were other jeans on the market that were in this style, and that Hoodies’ jeans included at least 4 or the 9 new design elements. The judge also considered that there was a likelihood of consumer confusion. The Judge therefore ruled an injunction against Hoodies.

Hoodies claimed that as a basic Israeli clothing company, they were ‘honoured’ that Diesel had taken note of them.

 COMMENT

If Hoodies can show that the registered designs are void due to publication prior to filing, or at least that the stitching on knees, front pocket and back of trouser leg was used in Diesel or other jeans prior to the design registration, I think they should prevail.

If, however, there are valid design registrations for these features, I think the judge is correct that combining them with different decorative pocket stitches should still be considered infringing

 


Trademark Trolling? Proctor & Gamble’s Actipearls Mark Opposed

January 12, 2015

actipearls

The Proctor & Gamble Company submitted Israel trademark application No. 250720 “Actipearls”. The mark covers feminine hygiene and menstruation products, including sanitary napkins and tampons, panty-liners, internal absorbents and pads for feminine protection; all goods included in class 5. They are used as a deodorizing additive to Always products.

Super Medic (Medic Lite) LTD who apparently use the mark for toothpaste, opposed the mark. Proctor & Gamble have asked that Super Medic post a bond of 100,000 Shekels to cover costs should they lose their opposition.

The request for this sum was backed by the fact that in another proceeding, an expert witness for the defendant testified that Super Medic (Medic Lite) LTD is a straw company held for fighting legal battles only. The request related to an earlier decision concerning 243678 and was supported by an affidavit from a Ms Ben Naftali, a pre-article clerk (I suppose this is more interesting than photocopying and collating documents).

Super Medic (Medic Lite) LTD counter claimed that the timing of the bond request, which is after the filing of evidence by the opposer is indicative of inequitable behavior. The affidavit has been held by Applicants for over a year and only now is it being pulled out. Super Medic (Medic Lite) LTD also asserted that the request was not properly supported by an opinion regarding the likelihood of success, since the pre-article clerk was unqualified to opine on the subject. Super Medic consider that their chances of prevailing in this instance are high and therefore the request for bond should be rejected. Super Medic further noted that they had only recently deposited 400,000 NIS in the court’s coffers in another case where they were suing for 42,000,000 NIS. In that case they claimed that there was a ruling of over 8 million shekels in their favour. They further provided an accountant statement that their annual tax returns were regularly filed and taxes were paid, and a bank statement that they settled their debts. Finally, they filed an affidavit of the opposer to support their claim of liquidity.

Applicants countered that Super Medic has not yet lost a case and the financial status was based on an assumption of winning, and that anyway, the likelihood of success was only of relevance in the proportionality of the bond if it were to be considered excessive.

Ruling

The starting point is that limited companies initiating legal proceedings are required (if requested) to place a bond to cover expenses should they fail, see Section 353a of the company Law 199, and Supreme Appeals 10376/07 L.N. Engineering vs. Bank HaPoalim LTD, and 857/11 Beer Tuvia Municipality vs. Noris Development and Haulage LTD.

For a company to be exempt having to post a bond, the onus is on them to show financial resources or other reasons that might justify not requiring a bond. In this instance, Super Medic claims that such other reasons exist, i.e. a very high likelihood of success, proven liquidity and inequitable behaviour on the part of the Applicant.

Proctor & Gamble consider that Super Medic’s mark is not sufficiently close for there to be a case to answer to. Super Medic have submitted their evidence, but Proctor & Gamble are yet to do so. In the circumstances, Deputy Commissioner Ms Bracha considered it too early to ascertain the likelihood of success.

Ms Bracha rejected the argument that Super Medic are suffering loses from Proctor & Gamble’s use of the mark and therefore should not have to post a bond, noting that in another case Super Medic bankrupted an opposer.

As to the 8 million expected in the other case, Ms Bracha noted that there was no such ruling yet. Furthermore, she accepted P&G’s contention that the 400,000 Shekels bond in that case may have been a loan and does not indicate that Super Medic has resources. Documents provided by Super Medic did show other financial activity but did not indicate liquidity of a solid financial footing. Furthermore, their own witness had, in another case, indicated a lack of seizable assets.

The arguments of inequitable behaviour were also rejected.

Ms Bracha concluded that requiring a bond was reasonable in the circumstances as there was insufficient reason to deviate from the norm. Noting, however, that such bonds have to be reasonable, and in view of the fact that in a different pending case she had ruled that a bond of 20,000 Shekels was appropriate she ordered Super Medic to deposit a bond of 15000 Shekels to cover legal costs, if ruled against them within 30 days a s a prerequisite of continuing the proceeding. The Applicant will have two months to file their evidence from the payment of the bond.

Interim ruling on posting a bond in opposition to TM 250720 to Proctor & Gamble, opposer Super Medic, Ms Jacqueline Bracha, 21 December 2014.

Comment

Pearls are created by shellfish such as oysters to isolate and coat over natural irritants. It seems that Active Pearls is a trademark used by Fa’s Deo Stick Deodorant which is owned by Henkel. It is used by a company called Physioderm as a brand for high-performance skin cleanser with dirt-binding castor-oil wax pearls for the removal of heavy dirt, e.g. oil, soot, metallic dust and graphite. Dr Tim sells active pearls as an additive to aquariums.

There seem to be many women who object to the actipearls marketing exercise of Proctor & Gamble, and consider it misogynistic. They find the concept of artificially perfumed sanitary pads offensive and likely to increase risk of infection or late detection of same. One example is here .

Getting back on subject, if Super Medic is indeed a legal entity without assets, posting a bond seems reasonable. In general, there has to be some consequences of losing law suits and against filing frivolous law suits. If the US courts adopted this position, much of the problem of trolling would disappear.

On the other hand, the story of Naboth’s Vineyard, and indeed, that of Bat Sheva amply demonstrate the problem of power players riding roughshod over smaller parties. If a company like P&G should decide to use a trademark registered to a small company or in owned by the small company by virtue of the Common Law, the smaller parties should have access to the courts and shouldn’t have unnecessary barriers put in their way, such as having to pay inflated bonds.


Season’s Greetings

December 18, 2014

Factor santa wrong address


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