Coexistence of trademarks in Israel is not merely a matter of consent of the parties concerned

MusicArt LTD applied for Israel trademark Nos 236517 and 236701 for “Alma” in classes 41, 44 and 43.

The marks cover: Entertainment and culture activities including live entertainment and musical entertainment; nightclubs, sport clubs, providing recreational facilities; arranging and conducting of functions, conferences, conventions, exhibitions, seminars and meetings; theatre, opera, concert, ticket reservations; all included in class 41, and
Rental of temporary accommodation; reservation; hotel, motel, bar, cafe, restaurant, banqueting and catering services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings in class 43.

Ganor opposed these registrations, since the marks were confusingly similar to mark number 136149 (Alma Beach) that she owned.

The two sides came to a co-existence arrangement under which MusicArt would have rights to the wordmark Alma in the North of Israel, North of Caesaria, whereas MS Ganor would have rights to the Alma Beach mark as illustrated, South of Caesaria. However, withdrawal of the opposition was conditional on the coexistence agreement being accepted by the Patent and Trademark Authority.

 Ms Yaara Shoshani Caspi, the adjudicator of intellectual property in the Israel Patent and Trademark Authority refused to accept the coexistence agreement. Since the word marks were distinguishable from the graphic image, she was prepared to allow the registration of the marks, and the opposition to continue.

Her position is that although two parties can decide to coexist, the Trademark Office is obliged to consider other issues, such as protecting the public from confusion. Geographical limitations are particularly problematic bearing in mind the small dimensions of the country.

The parties have been given 20 days to inform the Israel Patent & Trademark Authority how they wish to continue.

0 Responses to Coexistence of trademarks in Israel is not merely a matter of consent of the parties concerned

  1. Hi Michael,

    In Costa Rica, since around 2007, the situation became eerily similar to what you cite in your blog post. Additionally, I believe that both countries are somewhat similar in size.

    In our case, the Trademark Office and its Superior began routinely refusing to register applications based on consent agreements. Of course, this new development came as a surprise to may of us. In the past, these agreements were only restricted for goods in Class 5 or if any other public interest reasons demanded a more proactive decision to protecting the public from confusion.

    Glad to see we are not the only ones facing these kinds of issues.

    Best regards,

    Luis

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