If a second, trademark application is filed whilst a first similar mark is pending, the patent office initiates a competing marks procedure under section 29 of the Trademark Ordinance 1972. One mark is chosen to proceed to examination, and only once it is allowed or rejected, is the other mark examined. When choosing which mark to proceed with, the first mark filed is a consideration, but the patent office also considers the scope of use of the marks by the two applicants, and also whether there is evidence of inequitable behavior.
In this case, a Mr Joash Hassidim filed Israel trademark application no. 250709 on 30 October 2012 for a stylized mark containing the words Ice Shot, for alcoholic drinks in class 33. On 7 February 2013, Ice Shot LTD. filed Israel trademark application no. 253348 for a different stylized mark containing the words Ice Shot, again for alcoholic drinks, excluding beer in class 33.
The sides were given until 30 November 2013 to submit evidence, but the second applicant, Ice Shot LTD. missed this deadline and only evidence on 5 December 2013 without asking for or being granted an extension. In an interim ruling on 9 December 2013, the Deputy Commissioner, Ms Bracha, ruled that the evidence would not be considered
On 12 February 2014, Mr Hassidim was cross-examined on his statement. Mr Hassidim claimed that he and his partners conceived the mark in 2009 or 2010 and in 2011 engaged a graphic designer to create the logo and packaging. The mark is being used in connection with a fruit flavored alcohol that is intended for freezing (presumably intention is to be sold from a freezer, at or below 0°C, the alcoholic beverage will not be frozen). The product was launched in Elat and from 2012 onwards, has been sold across the country.
Hassidim claimed that he first learned of the use by Ice Shot in 2013. He summed up noting that the he was the first to file, his product is available in over 1000 outlets and at various events and hotels, and that since the competing marks evidence was not accepted, they really had no claims at all. He also provided various publicity material from local newspapers, the internet and Facebook showing usage of the mark.
Ice-Shot LTD. made various counter-claims re usage of mark from 2012, but since their evidence was not accepted, they couldn’t substantiate their claims. Ice-Shot tried to argue that Hassidim’s usage was only in Elat and mostly on off-shore cruises and could not fairly be considered usage in Israel. They claimed to have continuous registration of the web domain www.iceshot.co.il, which the first applicant should have known about, and that the earlier filing by first applicant was only an insignificant three months earlier.
In conclusion, since none of the evidence of Ice-Shot LTD was accepted, the equitable behavior of the first applicant could not be challenged. Arguably the second applicant filed only on learning about the first applicant’s filing. That as may be, Israel trademark application no. 250709 to Hassidim (Ice Line LTD) issued, and the later filed Israel trademark application no. 253348 was canceled. Costs of 7000 Shekels + VAT + expenses of 700 shekels (a total of about $2200) were awarded to Hassidim.
Decision re Ice Line LTD. vs. Ice Shot LTD., Ms Jaqueline Bracha, 12 Feb 2014
The moral of the story is to file one’s evidence in time.