Israel Trademark Application No. 232574 for “INFINITY” was filed by a Mr Amir Eyal and covers Insurance, financing, namely, portfolio asset management, investment house services, providing funds, special education funds; investment; monetary affairs; pensionary saving; all the aforesaid services, not with respect to rental, leasing purchase or use of automobiles; all included in class 36.
Due to an earlier mark, No 116478, for INFINITE, covering all goods in the same class, the mark was refused under Sections 11(9) and 29 of the Trademark Ordinance.
Eyal (through the good services of Eyal Bressler) argued that his Infinity Group, founded in 1997, was one of the six largest financial management companies in Israel according to Dun’s 100 Guide 2012. He further argued that both in appearance and phonetically, the two marks were not identical; that the consumer of the type of services offered was very discerning so there was no likelihood of confusion; that due to publicity and usage, the mark was well known, and since the issued mark was for an adjective and the requested mark was for a noun, there was no likelihood of confusion.
In her ruling, Ms Yaara Shoshani Caspi noted that applicant had failed to provide any evidence to support his claims and had not made an affidavit to support his statements.
She went on to apply the triple test.
Taking the mark in its entirety and without evidence that the suffix was sufficiently different to avoid confusion, Ms Caspi ruled that the marks were confusingly similar in appearance and sound. Since the existing mark covers class 36 in its entirety, without any evidence to the contrary, the goods may be considered as being similar.
With applicant failing to provide evidence that the consumers were too sophisticated to be confused, and with services such as pensions being available to all, she refused to accept that the target group was different.
Perhaps surprisingly, Ms Caspi ruled that the mark INFINITE is arbitrary and imaginative, since financial services are never without end, and so concluded that the original mark owner was entitled to wide protection.
She dismissed the adjective – noun argument under the ‘anything else’ clause, and thus concluded that the mark INFINITY was similar enough to INFINITE (owned by VISA) to be confusing, noted that VISA had not agreed to coexistence, and went on to reject the application.
I don’t think the term Infinite or infinity is so random and arbitrary. I note that Bank Mizrachi uses an infinity sign. Applicant should have provided affidavits and surveys to argue that the mark was well known and didn’t. The decision is a correct one.