This is yet another competing marks decision.
Meat in Each Bite LTD filed Israel Trademark Number 248728 on 7 August 2012 for Moo Moo as shown below.
Moo & Moo Butchery (1984) LTD filed filed Israel Trademark Number 251439 on 27 November 2012 for Moo & Moo as illustrated below.
Both marks covered a range of goods in classes 29 and 43.
Since the second mark was filed before the first mark was examined, and considering the marks confusingly similar to the point that customers might be confused as to the origin of the goods, the Trademark Office decided to launch a competing marks procedure.
The parties were unable to come to any understanding, and the trademark department decided under Section 29 to allow the parties to present evidence.
The second applicant, Moo & Moo Butchery (1984) LTD, filed three affidavits. The first, from Mr Amir Levi, the owner and manager of the firm who testified that the firm had been in existence since 1984 and the name of the firm Moo & Moo was registered in 1985. The firm had started as a mere butchers, but had grown into a restaurant with a butchers therein. Mr Levi showed TV clips, newspaper and restaurant reviews that showed that the firm was known, and detailed Cease and Desist letters received from Meat in Each Bite LTD. The chef and restaurateur Mr Bukshashter testified that he knew of the firm for over 20 years and Mr Yechiel Gorfinkel, the food journalist of Globes, Israel’s business newspaper also testified to knowing about the firm for a long period of time
The first applicant did not provide any evidence. Furthermore, his representative was prepared to accept the evidence of the second applicant without cross-examination. Also, the first applicant was prepared to waive the registration in class 43, relating to restaurants, etc. and to concentrate on the mark in class 29, for foodstuffs.
In the hearing, the first applicant pointed out that the marks looked different since his mark had graphical elements and the slogan ‘meat in each bite’, whereas the second mark was only for the word. Furthermore, his mark was Moo Moo, whereas the competing mark included a ו letter indicating the word ‘and’, which was clearly heard, so the marks sounded different, not merely looked different.
The owner of Moo Moo in Every Bite argued that he operated a fast food joint and the portions, consisting of small pieces of meat, were known as moo moos, whereas Moo & Moo served large steaks and sold cuts of beef. He argued that he had acted equitably whereas, to the best of his knowledge, the second applicant didn’t actually use the mark as registered, only the Hebrew words מו ומו (Moo v’Moo). Finally, he offered coexistence.
The second mark owner Moo & Moo argued that there was no room for coexistence and that due to his continuous use since 1984 had created a reputation and gave him preference. His choice of the mark was clearly equitable since he was using it years before the second applicant. Furthermore, in addition to the restaurant and butcher’s shop, he claimed to also provide fast food under the same name.
In her ruling, the Deputy Commissioner Ms Jacqueline Bracha noted that the facts were clear.
Since the first applicant had filed their mark a few months before the second was outweighed by the longevity and proven use by the second applicant. No argument of inequitable behaviour could be made against the second applicant. Consequently, the Moo Moo application by Meat in Each Bite LTD was cancelled and Moo & Moo was allowed to continue to examination. Costs of NIS 1000 + legal fees of NIS 10,000 were awarded against Meat in Each Bite LTD.
Obviously, Moo & Moo should have registered their mark in 1984 or soon after. Their common law rights are, however, well established and regardless of whether Meat in Each Bite LTD had intentionally filed a similar mark, there is a likelihood of confusion, at least to humans. I understand however, that cows see things differently though, and the and is given more weight by bovines.