Competing Marks for קניה טובה (Good Buy)

The Hebrew phrase “Kniya Tova” קניה טובה means Good Buy. It is more or less synonymous with the Yiddish phrase מצאיה  – metzioh.

Kniya Tova B’Internet LTD. filed a request for TM 245939  for the words קניה טובה (kniya tova), for concentrating and offering deals over the Internet (class 35). The application was filed on 15 April 2012.

On 14 June 2012, and prior to TM 245939  being examined, a graphic trademark TM 24729 was filed by Kniya Tova l’Starchan LTD. This mark is shown below:

kniya tova

On 25 July 2012, the trademark department at the Israel Patent and Trademark Office started a competing marks proceeding, and gave the parties an opportunity to present evidence. On 28 February 2013, a hearing was heard at which the parties were cross-examined on their statements. Since Kniya Tova B’Internet LTD. were using their mark on the Internet (on the ZAP website), the question arose as to how the mark was displayed, and in a preliminary ruling of 16 May 2013, the parties were given a further opportunity to submit evidence.

Background

Kniya Tova B’Internet LTD. has been in existence since 2006, but started trading in 2004 as Kavei Tikshoret b’Israel (Israel Telecommunication Lines). Kniya Tova B’Internet LTD. uses the mark as part of the phrase Kniya Tova b’Israel (Good buy in Israel) coming out of a megaphone held by a woman.

kniya tova l'israel

Kniya Tova l’Starchan LTD. started trading via telesales over the phone in 2009, and in 2011 started selling over the Internet from their website www.knia-tova.com (I still prefer my transliteration of kniya qith a Y, so am keeping it).

Claims of each side

Kniya Tova B’Internet LTD. claim that they’ve accumulated a lot of good will and market recognition in the years since 2004. Over the years 2004 to 2010, they have invested NIS 100,000 in advertising and in the years 2008-2012, enjoyed thousands of visits and purchases. In September 2009, the popular internet site Mako rated them one of the top 5 sales sites. The phrase Kniya Tova (in Hebrew) is widely used as a Google search term. They have a facebook presence, a turnover of millions of shekels a year. Kniya Tova B’Internet LTD. alleged that Kniya Tova l’Starchan LTD. originally started trading on the phone using the phrase Kniya Tova to free-ride on Kniya Tova B’Internet LTD.‘s reputation. Indeed, Kniya Tova B’Internet LTD. produced a large number of complaints directed to them that grumbled at service provided by Kniya Tova l’Starchan LTD. Furthermore, Kniya Tova B’Internet LTD. alleged that Kniya Tova l’Starchan LTD. launched their own website as a further attempt to steal customers from Kniya Tova B’Internet LTD. Kniya Tova B’Internet LTD. also noted that their trademark application was filed first, some two months before that of Kniya Tova l’Starchan LTD.

Kniya Tova l’Starchan LTD. claims to have made extensive usage both the phrase Kniya Tova and their graphic image since 2009, and had spent some 823,000 NIS in advertising. The owner of Kniya Tova l’Starchan LTD. provided some evidence of usage of the term Kniya Tova from 2005, but it wasn’t clear that the usage could be considered as relevant to Kniya Tova l’Starchan LTD. Despite not investing in website optimization, Kniya Tova l’Starchan LTD. noted that the phrase Kniya Tova used as a Google search term listed their company fourth, only three places behind Kniya Tova B’Internet LTD. they attributed this to their reputation built up through telesales, etc. Kniya Tova B’Internet LTD. gave evidence of sales of 1,167,031 NIS in 2009, rising ten fold to 11,246,089 in 2011, which they considered showed massive usage of their branding. Kniya Tova l’Starchan LTD. suggested that since Kniya Tova B’Internet LTD. also uses a graphic image KTL standing for Kniya tova l’Israel, they do not only use the term Kniya Tova as their trademark. They therefore alleged Kniya Tova B’Internet LTD. of inequitable behaviour (?!) Finally, Kniya Tova l’Starchan LTD. proposed that the graphic trademarks and logos of the two firms could co-exist.

Decision

Citing Section 29a of the Trademark Ordinance, the Deputy Commissioner Ms Jacqueline Bracha noted that in cases of competing marks, there are three elements to be considered: who filed first, extent of usage and equitable behaviour. She stressed that the apparent irregisterability of the word mark Kniya Tova, was irrelevant to the present proceeding which was not to rule on whether either mark was registerable, but only which mark should proceed to examination.

Kniya Tova B’Internet LTD.‘s mark was filed first. It was certainly in use for longer, and apparently was used more widely as well. (the fact that they also used other marks was not considered evidence of bad faith or otherwise considered detrimental. The main issue is one of equitable behaviour. Ms Bracha ruled that Kniya Tova l’Starchan LTD.‘s arguments that Kniya Tova B’Internet LTD. had acted in bad faith were not persuasive. Furthermore, the fact that Kniya Tova l’Starchan LTD. was a Johnny come lately who had chosen the same mark was at least suspicious. The decision now cites some of the cross-examination, and then Ms Bracha concludes that Kniya Tova B’Internet LTD. have the better case in this regard as well.

Coexistence

Having established inequitable behavior on the part of Kniya Tova l’Starchan LTD., coexistence isn’t really an option. Furthermore, both companies using logos that include the same phrase was clearly confusing to the public and there was also evidence of actual confusion. In such a case, Ms Bracha doubted that the co-existence was possible, even were both marks to include graphic elements.

Conclusion

Kniya Tova l’Starchan LTD.‘s mark was rejected, and Kniya Tova B’Internet LTD.‘s word mark was allowed to continue to examination. Costs of NIS 2000 and NIS 18,000 in legal fees were awarded to Kniya Tova B’Internet LTD.

COMMENTS

The decision is a correct one. I suspect that the word mark Kniya Tova will be rejected as descriptive and laudatory. It doesn’t even have the saving grace of having been registered in its home country.

Big Deal. Goodbye.

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