Under Section 29 of the Trademark Ordinance, where two applicants file similar trademark applications at around the same time, so they are co-pending, an interference proceeding results. The first to file or at least the applicant with an earlier priority date has a small advantage, but in the absence of inequitable behavior, market recognition, sales and the like are more significant. In Israel, equitable behavior or the lack of it, generally trumps other considerations.
Japan Tobacco Inc. filed a graphical trademark application (No. 238943) that included the words “Activate Freshness” on 3 June 2011, claiming priority from an earlier Swiss mark filed on 21 April 2011. They had also filed a word mark (no. 236442 for the word “Activate” on 16 March 2011, claiming priority from an earlier Swiss mark filed on 24 November 2011.
Phillip Morris Products LTD. filed a graphical Israel trademark application (No. 235858) that included the Words “L&M Activate 2 in 1 Activate Fresh Flavor: ” on 6 January 2011, claiming priority from an earlier mark, number , claiming priority from an earlier Swiss mark (No. 064971) fined on 16 December 2010.
Philip Morris’ representative in Israel explained that the Activate on their box serves to indicate that there is a filter that releases a mint flavour that imparts a feeling of freshness to the smoker. He felt that the marks could coexist without causing confusing. Alternatively, Philip Morris argued that due to their having a huge reputation in the cigarette market, their application should take precedent. They did not believe that Japan Tobacco deserved a trademark for the word activate which they saw as being descriptive. They also noted that any reputation argued for by Japan Tobacco, was reputation abroad.
Japanese Tobacco argued a reputation for their leading brands such as Camel and WInston. They claimed that Activate was a type of cigarette with a flavoured capsule that was being marketed as part of the Camel range, noting that the cigarette box included a picture of a camel, but not the word camel. Since the brand was launched in Sweden, the Activate cigarettes had been very successful, and were well known internationally. They argued that the reputation had spilled into Israel, but provided no evidence for that.
The Commissioner of Patents and Trademarks, Dr Assa Kling noted that both sides acknowledged that the marks were similar and were for the same goods. He went on to ruled that the Japan Tobacco Company’s mark was filed first and has some market presence, with the first launch in Sweden including 199,500 packets, which was followed by launches in Italy, Holland, Poland, Austria, Portugal, South Africa and Luxembourg. At the time of the Israel hearing some 70 million Activate fags had been sold. There was, however, no sales in Israel and no evidence presented for the reputation to have spilled over into Israel. Nevertheless, there were no allegations or indications of inequitable behavior against Japan Tobacco Inc.
Philip Morris’ mark was filed after Japan Tobacco’s first filing of the word Activate, and they provided no evidence of sales in Israel or elsewhere, They have provided no explanation of the uncanny similarity of the marks. It seems that their competing product as launched in Israel included the slogan “press for menthol flavor”.
More or less alleging poor faith in Philip Morris’ application, since it wasn’t the slogan in use, the Phillip Morris mark was refused and the Japan Tobacco Inc’s mark was allowed to proceed to examination.
Parties were invited to file for costs.
As a non-smoker, I don’t associate freshness with cigarettes. I also don’t associate freshness with camels.
Nevertheless, it does seem that this decision is a correct one. In a slew of previous decisions Philip Morris accuses Turkish manufacturers of passing off their cigarettes as Morris’ leading brands. In this case, it seems as though Morris has attempted to trade off an idea developed by a competitor and then to try to file ‘blocking’ marks, which is not what trademark law is about.