Gypsophila, or baby’s breath, is a popular addition to flower arrangements, particularly bridal bouquets. One Israeli grower, who exports to the flower bourse in Holland, has a trademark for a variety they’ve developed, called Million Stars. Another variety they’ve developed is trademarked as Lucky Stars.
A competing grower, whose family name is Mor attempted to register a trademark More Stars. The owners of the Million Stars and Lucky Stars marks appealed the registration, but then Deputy Commissioner of Patents and Trademarks, Shalev-Shmulovitz, ruled that the word star is indicative and thus the protection for the mark is minimal. He did not see that More Stars was confusingly similar with Million Stars and allowed the mark to be registered.
An appeal was filed. Since the appeal was filed back in 2010, the appellate court was the Israel Supreme Court. Subsequent appeals of patent office decisions are to the District Court.
In a fairly standard decision looking at the likelihood of confusion and applying the triple test, the Israel Supreme Court ruled that Shmulovitz was wrong in classifying the term star as indicative, and it should be considered as descriptive and given little weight. More Stars, like Million Stars, indicates a very large number and the M makes the two marks similar. The fact that the Israel registrations for Million Stars and Lucky Stars were word marks, whilst More Stars included graphic elements, did not alter the confusing similarity, since the marks were visually and audibly similar and applied to essentially the same goods with the same distribution channels.
The registration was canceled and NIS 50,000 of costs were awarded to the appellants.
Decision Civil Appeal 111/07 Micha Danziger and Danziger Flower Farm Dan vs. Shmuel Mor.
The names are for similar but registerably different strains of flowers, i.e. the flowers are different.
Purchasers at the Flower Bourse would presumably know the difference. That as may be, it is very difficult to square this ruling with the temporary injunction that Asher Gronisch gave in the Shemesh restaurant decision, where he ruled that registration of the word Sun for a name of a grill bar did not preclude others from using the word sun for other restaurants. See here