Opposition to Israel trademark No. 238704 Lapidor – לפידאור

hanukia   lapidor   ptilor

Lapidor means “torch light” – torch as in a hand held flaming article, not an electronic pocket torch.

Polack Steinberg LTC filed Israel trademark application number 238704 for Lapidor for illumination equipment and accessories in Class 11 on 21 June 2011, and the mark was accepted and published for opposition purposes on 30 April 2012.

On 30 July 2012, Shalhevet Mifal l’Yitzur Nerot LTD (literally Flame Factory for Manufacturing Candles LTD) opposed the mark.

Opposer’s Claims

The Opposer manufacturers oil lamps and religious paraphernalia from various raw materials including plastic, glass and various metals. They have a registered trademark number 231561 for “Ptilor – פתילאור” literally, “light wick”. They also have a registered design for a glass oil lamp, and they claim to have exerted a lot of effort in designing an oil lamp that is easy to install and use, and where the consumerables may be safely replaced.

Originally, Opposer claimed that their mark was well-known in Israel and abroad, but this claim was later dropped.

Opposer alleged that applicant was selling his products as Ptilor – lapidor, and the New Ptilor – Lapidor. On discovering this, the Opposer filed a court proceedings in the District Court (3864-11-11) claiming passing off and unjust enrichment, resulting in a ruling against the applicant using Opposer’s marks.

Finally, Opposer argued that the applicant’s marks are confusingly similar and in the same class, and thus contravene sections 11(6) and 11(9) of the trademark ordinance.

Applicant’s Claims

Applicant manufactures oil lamps in the form of a torch which is packages in a package that converts into a Hanukkah lamp. The mark was chosen due to the shape of the lamp.

Applicant also has registered designs for the box (51251) and for the individual lamps (51252). Applicant claims to have its own reputation and client base and does not need to ride on Opposer’s reputation.

Applicant claims that the advertising campaign was without their knowledge and consent. Finally, the term “or” means light and no one company deserves a monopoly on this generic, descriptive word.

Both sides provides affidavits and supporting evidence and were cross examined on 9 December 2013.

The Ruling

The District Court only enjoined the defendants from using the word Ptilor and not from the word Lapidor (or from the suffix Or).

With regards to the claim that the marks were confusingly similar, the Deputy Commissioner applied the Triple Test. With regard to the appearance & sound of the mark, she ruled that the mark has to be considered in its entirety, and the little weight given to the suffix –or meaning light. Although the clients and distribution channels are similar, with no indication of inequitable behavior in choice of mark and with the marks looking and sounding different, the similarity in clients and distribution channels could not in and of itself create a likelihood of confusion.

The Deputy Commissioner argued that the claim that Lapidor was using the term Ptilor in comparative advertising is problematic since the word was associated with the product and arguably became generic and recognized as the product, i.e. a glass container of olive oil with a wick that made lighting Shabbat and Hanukkah candles with olive oil less fiddly. In other words, the Opposer’s mark is problematic, not the Applicant’s!

The charges of passing off and inequitable behavior was not proven and the Deputy Commissioner did not consider it necessary to address the other claims regarding Unfair Competion.

Conclusion

The opposition was rejected and the Opposer was ordered to pay 1500 Shekels costs and 17,000 Shekels in legal fees.

Israel Patent Office Ruling Concerning Israel trademark application number 238704 “Lapidor”, Jacqueline Bracha, 27 March 2014. 

COMMENT

The issue here is competition, pure and simple. Whatever applicant did or didn’t authorize regarding combining the marks, the term ‘or’ means light and Lapidor and Ptilor are not confusingly similar.

Marketing a similar product to one successful on the market is legitimate so long as the packaging is dissimilar, the branding is dissimilar, where a design is registered, (or under A.Sh.I.R. also unregistered designs), so long as the design appears different. That is the case here.

There was a case some years back where a Turkish company making paint called Dewilux had their mark canceled by ICI, owners of Dulux. The term lux means light, but not many people know that. The Turks mark was confusingly similar. The two marks in this case simply aren’t. Whether either name is particularly distinctive is another issue.\

 

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