The IP adjudicator at the Israeli Trademarks Office has dismissed an opposition against the registration of the trademark ARCOSTEEL on the grounds that there was no likelihood of confusion with the earlier registered trademark ARCOS (April 2 2009).
Millennium Mark filed to register the figurative mark ARCOSTEEL for stainless steel kitchenware (Class 21 of the Nice Classification) in IL TM Application No. 138568.
Arcos Hermanos SA, the owner of the figurative trademark ARCOS for cutlery (translation for Ameican readers: flatware or silverware) in (Class 8), opposed the application claiming that it was confusingly similar to its registered mark.
Having first found no basis for bad faith allegations, the adjudicator went on to consider whether there was a likelihood of confusion or association between the marks.
Comparing the marks as a whole, the IP adjudicator found that they looked and sounded different.
Arcos claimed that consumers would believe that the ARCOSTEEL mark indicated steel products produced by Arcos, that Internet search engines looking for ‘Arcos’ found Millennium’s products and that the word ‘steel’ is generic and suggestive/descriptive so the first part ‘Arcos’ was dominant. The IP adjudicator rejected these points and ruled that customers would read the mark ‘Arco Steel’ and not Arcos Steel.
Even though not considering the ARCOS mark well-known, the Arbitrator considered that were it a famous mark under the Paris Convention, that wouldn’t matter, since the more famous the mark, the less likely public confusion is.
After the non-likelihood of confusion of XL for energetic drinks and XL for energetic drinks, since one is fizzy and the other flat, and one is sold in distinctive aluminium ring-pull cans and the other in PET bottles, the IP Adjudicator, Noach Shalev Shmulovich, is being consistent.
I am not sure that I agree with him though. Is it true that the Israeli public is not likely to be confused? “Arcos Steel” wouldn’t be contracted to Arcosteel. That sort of thing just doesn’t happen in Israel does it?
I think I would have come down on Arcos’ side and rejected the registration. If, for argument’s sake and not implying that this is the case, Arcosteel’s goods were inferior or defective in some manner, could that not damage Arcos’ reputation? I think the applicant should have been alerted by his counsel and should have chosen an even less similar mark. That said, whilst disagreeing, I do not find the decision totally unreasonable.