This post reports on one of several recent decisions concerning competing marks.
The marks in question are Israel trademark application 232681 “מו-נט TAXI-NET” filed by Moshe Zucker,
The two marks are reproduced below:
and Israel trademark application 238067 for “TAXINET” filed by Oren Ravino and displayed below.
The first applicant, Moshe Zucker, filed on 7 September 2010 for supply, access and free internet services in taxicabs. On 15 May 2011, the second applicant, Oren Ravino, filed his mark for software including cellular applications for finding cab, ordering cabs on line and ordering journeys over the Internet.
On 11 March 2012 the patent office announced that it was initiating a competing marks procedure. Since the sides were unable to come to any understanding, they submitted their evidence and the witnesses were cross examined on 18 April 2013. Moshe Zucker is a taxi driver who provides his customers with wireless internet access during journeys with him. His services may be ordered via the website taxi-net.co.il. Mr Ravino is also a taxi driver who provides cab rides via his internet site taxinet.co.il
On 6 September 2010, Mr Zucker entered the Internet site of Mr Ravino and received an error message (ERROR 404), and subsequently contacted Mr Ravino and offered to purchase his domain. This request was ignored and the consequently he purchased the somewhat similar name (the double barreled one with the aristocratic hyphen).
The main claims of the two sides
Mr Zucker claims that he filed his application nine months before his competitor. He also claims to have heavily invested in publicizing his services on television, in the business and main stream press, using evidence submitted by Ravino that this was the case. He also claimed additional publicity but did not provide evidence. He further claimed that some of his clients were foreign businessmen who specifically ordered his services because of the internet support. Once again, no evidence to support this claim was forthcoming. Mr Zucker also claimed that Ravino’s failure to register the mark close to purchasing the domain was inequitable behavior and caused laches due to the time passed. Finally, Mr Zucker claimed that the marks were significantly different and were in different classes so coexistence was possible.
Mr Ravino argued that he was using his mark from 2009 onwards when he first discussed the project with programmers. He supported this claim with a secrecy agreement from March 2011. In February 2010 Mr Ravino purchased a communication line from Orange in the name Taxinet. He provided the invoice as proof of purchase. Mr Ravino purchased the domain in June 2010 an submitted invoice to prove this. He claims that the website is known to his clients and enables them to purchase taxi rides. Ravino provided various correspondence with clients from 12 April 2011 onwards, showing that the mark was in use from that date.
On 26 June 2011, Ravino requested that Zucker stop using the term TAXINET. Ravino argued that Zucker had purchased his confusingly similar name to free ride on Ravino’s reputation. Ravino rejected the possibility of coexistence arguing that the services provided by the two companies overlapped.
In her Ruling, Ms Bracha first cited Section 29(a) of the Law to show that this case fell into the category of competing marks. She then cited the relevant case-law to show that the considerations were date of application for mark, scale of use and equitable behaviour. As to the filing date, after noting that this was the least important of the considerations, Ms Bracha noted that Mr Zucker had filed his mark a full nine months earlier which is a significant period of time.
Despite Ravino claiming to have started work with the site in December 2009, the first evidence was only March 2011. Although Ravino had purchased the domain on 8 June 2010, it took a while until the site was up and running, and Mr Zucker could show that on 6 September 2010, the site was not yet running. Indeed, it wasn’t clear from Ravino’s testimony when the site actually went up. The first evidence that Ravino could supply of using the mark was on 12 April 2011 in correspondence with clients. In consequence of this, there was no evidence of Ravino using the mark until March or April 2011, which was fairly close to when his application was submitted. Although there was some evidence of use in 2011 and 2012, the amount of use that Ravino could show was very small.
In contrast, Zucker was interviewed on television on 15 November 2010. From the evidence it appears that Mr Zucker was using the mark during the second half of 2010, whereas Ravino was using the mark in 2011. Ms Bracha could not see a clear advantage to either side in terms of amount of use and period of use.
Likewise, she could not see signs of inequitable behaviour on the part of either applicant.
Under Section 30(a) of the trademark regulations, in cases of equitable behaviour, the commissioner is able to allow coexistence. Despite Mr Ravino’s objections, she could not see a reason to allow the two marks to coexist since they included graphical elements, were coloured and were very different.
Furthermore, the similar part is descriptive and therefore inherently unregisterable, so there was no justification in awarding it solely to one party or the other.
Finally, although both services were related to taxi related internet services, they were different. Zucker provides internet access to his clients, whereas Ravino provides a taxi ordering service over the internet. Notably, neither side showed evidence of client confusion.
In conclusion, Mr Zucker was allowed to register his TM mark no. 232681 TAXI-NET מו-נט for providing internet access in taxies”. Whereas Mr Ravino was able to register his mark 238067, TAXINET for “taxi transportation services.