Gemcom LTD. filed Israel trademark application number 170851 for “Small Talk”. Orange Personal Communications LTD. filed an opposition, claiming likelihood of confusion with their mark “big talk”.
After four years of submissions of evidence, the Commissioner of Patents and Trademarks, Dr. Meir Noam, has rejected the arguments put forwards by Orange (Partners), and allowed registration of the mark.
To obtain the mark for big talk, Orange had to disclaim both words individually. Grounds for opposition include appearance and sound, types of goods and marketing channels and a catch-all common sense and everything else clause. Clearly the marks are not similar in appearance and sound, and the word talk is generic for mobile phone communication. The marks are also currently used for different telecommunication services.
The main issue is common sense. Does a mark give rights to opposite words by association?
Yes, No, Black, White. Confusing isn’t it?
It seems silly that it should, but the OHIM found confusion for Black Star and White Star champagnes and Proctor and Gamble managed to convince the US Court of Customs and Appeals that Mr. Stain was confusing with Mr. Clean.
The Commissioner went to rule that the dictionary definitions of small talk, i.e. idle chitchat, as a pose to big talk – important and weighty deliberations, supported arguments that the two marks were dissimilar. We are not sure why he didn’t come tot he conclusion that both were generic, but that as may be. In his conclusions, the commissioner ruled that the likelihood of confusion was insufficient to rule out registration of the term as a trademark.
In an interesting wrinkle, the opposer attempted to claim that the mark “big talk” was well-known and thus entitled to wider protection on that basis. The commissioner discounted the evidence presented since Gem-com supplies its services to foreign workers and the survey used to support the claim that bog talk was well known was taken by telephoning Adult Jews using land lines, and so did not sample the relevant audience. This emphasizes the need to tailor surveys to the relevant audience.
I think the decision is a correct one, in that any other conclusion would be unacceptable.
I imagine Orange is very put out with the logo of the small talk Organization in the UK, see: www.smalltalk.org.uk/page33t.html