Israel Trademark Number 197349 to City Wash LTD is for a combination word-image mark consisting of a silhouette of a Tiger and the word Tigris which is tiger in Hebrew.
Their mark is reproduced below:
PUMA, AG Rudoph Dassler Sport, a German clothing company filed an opposition proceedings claiming that the tiger was confusingly similar to their puma logo.
Both companies make hats and shoes.
Puma claimed that the mark was non-distinctive, was confusingly similar to Puma’s marks and diluted the Puma mark.
According to Puma, the similarity lies in the combination of an image and a word, in the word being in capitals, and in bold. Both cats had the head, tail and claws in the same places. (This is a translation of the basis for the claims of ‘confusing similarity’ )
The Deputy Commissioner, Noach Shalev Shlomovits accepted the opposition and refused the mark. To add insult to injury, he also awarded NIS 30,000 damages.
I don’t think the fact that one manufacturer uses a combination mark including an image and a word gives a monopoly for marks of this sort. Nor does the choice of writing the brand name in capital letters or in a bold typeface.
Although it is true that both big cats have the head and tail at different ends, and depict claws on the feet, I am not sure that this fact is particularly confusing.
Both tigers and pumas are big cats, but tigers are bigger and fiercer than pumas. Although shown in silhouette, I think many people will have little trouble telling the felines apart. For those less familiar with feline anatomy, the opposed mark includes the word Tigris, which is something of a give-away.
Puma are not the only company using silhouettes of a big cat for branding purposes. So does Slazenger and Jaguar, also in Class 25. Interestingly, Slazenger has a mark for the silhouette not including a word. Their cat, which is rather more like a puma than a tiger is also facing to the left. So is Jaguar’s jaguar – which is also registered in Class 25.
With the word Tigris, which is very different from Puma, it is difficult to see the two marks as confusingly similar. This is particularly the case since Puma does not have anything like a monopoly on silhouettes of big cats, I therefore can’t see much logic in this decision.
I am not even sure that Puma is better known than Jaguar or Slazenger. District Court Judge Michal Agmon Gonen ruled that 4 stripe training shoes did not infringe Adidas’ three stripe mark, and that there was room for a cheaper, less exclusive brand. See West Bank Arab Prevails Against Adidas – Four Stripe Cheap Training Shoes Do not Infringe. That decision is on appeal to the Supreme Court but in general I would expect this to guide the arbitrators at the patent office.