Killah is a trademark aimed at the young female fashion market. The mark is owned by Upcoming TM S A, an Italian fashion company. The word Killah is slang for ‘killer’. Killah has been used worldwide since 1998.
Killy is owned by European Sports Merchandising and the brand is used for ski clothing, taking its names from the French champion skier Jean-Claude Killy.
Upcoming TM filed the Killah mark in Israel under class 18 (leather and artificial leather goods) in May 2005 and eventually the mark was registered. Subsequently, European Sports Merchandising filed and obtained trademarks for Killy in classes 18 (leather and artificial leather) and 25 (clothing).
When Upcoming TM tried to register the Killah mark in class 25 (clothing), the mark was refused as being confusingly similar to Killy.
The then Israel Registrar of Patents and Trademarks, Dr Meir Noam, reached his decision by applying the infamous triple test, and argued that the marks looked and sounded similar due to the dominant Kill syllable. Since young females sometimes skied, there was an overlap in the target customer group. Furthermore, although the Killy mark is currently only applied to sports goods, they could branch out into other clothing.
On appeal, Judge Ginat of the District Court overturned the ruling. According to Judge Ginat, the stress on the work Killah is on the first syllable, whereas in the word Killy, the stress is on the second syllable, so the word kill is not dominant in the sound of both marks. Furthermore, the marks look different since one ends in an ‘ah’ at the end and the other ends in a ‘y’. There is a relatively small group of ski enthusiasts who know exactly who Killy is and even if some of these are also fashion conscious young ladies, they would be unlikely to be confused between the two brands, even if they were to purchase both. Finally, although Killy could conceivably branch out into non-ski wear, they have been active in Israel and abroad for several years and the brand only sells ski clothing, so that problem can be shelved until relevant.
The decision was overturned on appeal and the Killah mark was allowed to be registered. Costs of NIS 42,000 were awarded against European Sports Merchandising to Upcoming TM for the costs of fighting both the opposition and the appeal.
49831.01.11 Appeal to District Court against Israel Patent Office Decision in matter of Upcoming TM SA vs. European Sports Merchandising, decision by Vice President of District Court Gideon Ginat 21 February 2012.