Competing Marks for Human Resources

254763

The Israel Trademark Office received two trademark applications for service marks from different Human resource companies. One (TM 235190) was for the letters HRS , the other, (TM 254763) filed slightly later, was the graphic mark with the letters HRUS shown above. Both applications  are in class 35. I was somewhat surprised that the marks were considered similar enough to initiate a competing marks procedure under section 29 of the Trademark Ordinance 1972. In such cases, the usage of the mark and good faith considerations may outweigh the first to apply in deciding which mark to register first. Once one mark is registered, the other mark may be examined, but the first mark often precludes registration.

In this case, the second applicant filed evidence but the first applicant was generally unresponsive. The second applicant asked for a ruling based on the submissions. The Adjudicator of Intellectual Property Ms Yaara Shoshana Caspi of the Patent Office was unhappy about ruling in such a manner, without giving the first applicant a chance to defend themselves. She couldn’t even ascertain that the second applicant or the agent of record had sent copies of filed documents to the first applicant. She awarded costs of 2000 shekels  against the first applicant, and ordered that all papers be sent direct to first applicant and not only to their legal representative. She also gave the first applicant an opportunity to switch legal counsel.

Competing service marks TM 235190 and TM 254763 – Interim ruling by Ms Yaara Shoshana Caspi, 11 February 2014.

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