If two identical or at least substantially similar marks are filed at around the same time by different applicants, such that Examination of the first mark has not started when the second mark is filed, a Competing Marks Procedure is instituted. The first to file is a consideration in who should be awarded the mark, but the scale of use is more important as is equitable behavior of the parties.
Israel Trademark application 243617 to Ephraim Zelzer shown below is for Dagesh Assistive Technologies. The word dagesh means accent, referring to the dot that makes coverts a soft letter e.g. V into a hard letter B, or a th into a T, and implies emphasis.
Israel Trademark application 243484 to Rivka Zaddick shown below is for Dagesh Center for Treatment, Coaching and Learning.
In both of these, the name is Dagesh. They are examples of competing marks.
Counsel of Applicant of the first filed mark requested that this not be considered a competing marks case and Counsel of the second to be filed mark responded by requesting that this be over-ruled. Counsel of first to filed mark answered to the response.
The Deputy Commissioner could not find any reasonable basis for canceling the competing mark procedure in the papers filed, and considered it appropriate to address the issues and cancel one mark. The first Applicant didn’t file an affidavit and the second Applicant filed his application late. The Deputy Commissioner decided that the best way forward was to grant a retroactive extension to second applicant for response already filed but to have him pay the extension fee for late response and to award costs to the first applicant. The second applicant thus had to immediately pay a one month’s extension fee and have 25 days to pay NIS 2000 in costs to the first applicant.