ARCOS for cutlery and ARCOSTEEL for steel kitchenware Not Confusing – Are they?

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.

Comment

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.

6 Responses to ARCOS for cutlery and ARCOSTEEL for steel kitchenware Not Confusing – Are they?

  1. Ethan says:

    I realize this is an old decision but I just came across your post while searching for Arcos information. I live in the U.S. currently but watch Israeli cooking shows online. I have seen Arcosteel show up more and more and I was already familiar with Arcos knives in Israel. Perhaps my having been away from the market led to my confusion but I just assumed the two were connected. Very interesting to know they are not and that the application to register Arcosteel was not deemed too confusing.

  2. beth says:

    We have been using Arcos knives for some time and enjoy them very much. When looking to add another knife to our collection, my husband bought an Arcosteel, thinking it was manufactured by the same company. I definitely prefer the Arcos and came upon this article because I wondered how the two companies were connected.

  3. D. Duck says:

    As a consumer, I certainly find the two marks confusing. I few months ago, I was researching a purchase of chef knives, and among other places, perused the main Arcos website.
    When I was researching a flatware purchase today, since I vaguely remembered that Arcos produced flatware, I naturally assumed that the two were connected. The lettering in the logs also looks broadly similar. Only when going back to the Arcos site, I found that they weren’t (from the cursory googling it also looks like Arcos flatware isn’t sold here in Israel).
    A general unqualified web search also appears to turn up that the Arcosteel mark is used only in Israel, by the importer of various kitchenware… it doesn’t look like it was an existing mark of another manufacturer. Given that, I personally disagree with the IP adjudicator because of the confusion issue, as well as being suspicious of the good faith claim, given that Arcos dates from the 18th century.
    To me it looks very similar to another local importer primarily of small kitchen appliances, who has been “Hemilton” as the brand name of their inexpensive products, and IMO the resemblance to the well known US appliance manufacturer “Hamilton Beach” isn’t accidental.

  4. Merav says:

    Very confusing IMHO. I almost bought an Arcosteel knife today instead of an Arcos knife I set out to buy.

  5. Doron sanders says:

    it’s funny that the Chinese actually called themselves thieves in their own name with a slight spelling mistake: ARCOSTEEL = Acros Steal

    However i must say that im pleased with Arcosteal, they have good quality for the best prices.

  6. Peter says:

    I agree that it is confusing. I own a set of Arcos knives and was almost duped into thinking that Arcosteel was a different line by the same manufacturer. Even though this is an old issue, it is still pertinent. As D. Duck points out, when a brand is used only in Israel and is made to be similar to a known brand, it is obviously meant to deceive, albeit legally. Well, caveat emptor!

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: