Competing Marks – With Pini in the Courtyard

Mamtakei 10 LTD. filed a trademark for an Arabesque roundel with the name with Pini in the Courtyard, back in June 2007. A couple of months later and before the mark was allowed, Pini Levy filed an almost identical mark.

I am reproducing the two marks below.

The squiggly bit underneath is a Hebrew script saying “Orgada” in the mamtakei 10 mark, and saying “missedet chef”, i.e. “chef restaurant” in the second mark.

From the decision it transpires that a restaurateur, Pini Levy, had a restaurant for several years in the courtyard of Feingold House, in the Nahalat Sheva pedestrian precinct in Jerusalem. Eventually, the restaurant got into financial difficulties, not helped by the terrorist attacks during the period, and the restaurant  closed down and a new restaurant was opened in Tel Aviv together with Mr Algaberli, the owner of Mamtakei 10 LTD. and the owner of an eatery called Orgada.

The partnership between the businessman and the chef worked for a few years and afterwards the two parted company. Mr Algaberli claimed that the reputation earned by the restaurant and accruing to the mark was the result of his investment and development, whereas Mr Levi claimed that it was his name.

The adjudicator of Intellectual Property, Ms. Shoshani Caspi, ruled that with similar clientele and providing a similar service, the two marks couldn’t coexist. Although Mr ALgaberi had filed a little earlier, this was considered of less relevance than the usage made by both sides and the evidence of bad faith. Specifically, Ms Caspi ruled that whereas Mr Levy had acted in good faith, she saw evidence of bad faith in Mr Algaberli rushing to file a trademark after the two had parted company.

Shoshani Caspi ruled that 201429, the earlier filed mark to Mamtakei 10, filed on 18 June 2007 was cancelled and ruled that the competing mark to Pini Levy, filed on 6 August 2010, could continue to examination. she ruled NIS 10,000 (nearly $3000 US) in costs to Levy.

CRITICISM 

I find the ruling strange. I don’t see evidence of bad faith in both sides rushing to file the name after parting company. Weight could be given to the fact that a restaurant is judged on the quality of the food and Pini was the name of the chef – so the mark should arguably go with him for that reason. Thus I think the result is correct, but not the reasoning.

Shoshani Caspi claimed not to be ruling on the division of assets between the parties but rather on the merits of the trademark applications.  This is not convincing.

Alternatively,  I wonder if both marks couldn’t have been allowed in Tel Aviv and Jerusalem with geographic limitations? Perhaps the Arabesque could have been considered allowed by both parties, but not the phrase “with Pini in the Courtyard”. Then again, perhaps such compromises should have been left to the parties and their lawyers to thrash out, with the onus on the patent office to simply not allow both marks.

Nevertheless, after the XO decision on competing marks (see Israel Patent Office Allows Two Companies to Register Same Trademark), or the strange decision by the Supreme Court re two restuarants called Shemesh in the greater Tel Aviv area (see Supreme Court Rules that Usage of “Shemesh” by Competing Restaurant is Kosher) one wonders why these two marks can’t coexist?



Categories: trademarks

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