In response to a boutique winery filing a trademark application for Yikvei Harei HaGalil – literally “Galilean Hills Winery”, an established company called Yikvei HaGalil – literally “Galilean Winery” filed an opposition and also filed a trademark application of their own. Now Yikvei HaGalil is actually not a winery at all, but rather makes spirits of various types, including Arak (an aniseed flavoured spirit).
Since there is no confusion between the products, although they are in the same class, Dr. Meir Noam, the Commissioner of Patents & Trademarks, rejected the opposition and allowed both marks to be registered, ruling that Yikvei HaGalil could use their marks on spirits but not on wines, and that Yikvei Harei HaGalil could make wines but not spirits. Noam declined to award costs.
Clearly in retrospect, the parties could have saved themselves a lot of bother and expense by coming to a similar position themselves. I find the case interesting because a neighbor and client of mine makes Israel’s top boutique wines under the name Tanya, named after his daughter. When he previously approached a leading trademark attorney he was told that since there is a trademark for “Vodka Tania”, a Polish vodka, in the same class, he couldn’t get a trademark. I told him we could deal with the problem, and we filed an application for the mark Tanya for wines only, and contacted the agent of record for the Vodka Tania trademark.
Since there was no case of bad faith or passing off, and since vodka and Cabernet Sauvignon are very different and the public were unlikely to get confused, the agents for Vodka Tania suggested we amended the application from Tanya for wines, to Tanya for wines and not vodka. in this manner, a great deal of time, money and aggravation was saved for both parties. This ruling vindicates my approach.