Brimag Digital Age LTD own Israel Trademark No. 154869 in Class 9. Taser International LTD filed a cancellation proceedings on 12 September 2013. The owners of the mark did not respond and so Taser was given an opportunity to substantiate their request. On 19 March 2014, Taser submitted their evidence, including an affidavit from Daniel Ben-Yishai, a trainee attorney at PCZL, the legal representatives of the Applicant for Cancellation. Notice of the submission of evidence was sent to the mark owner on 23 March 2014.
According to the Affidavit, on-line searches at the mark owners web sites http://www.brimag.co.il and http://www.brimag-systems.co.il on 11 September 2014 and 4 March 2013 failed to uncover any mention of the mark in question. Computer print-outs of the searches were attached. Ben Yishai testified to having phoned Brimag’s information center and their Customer Service and Replacement Parts line and they were unable to provide details of any part carrying the AXXON name.
Section 41 of the Trademark Ordinance allows any party to initiate cancellation proceedings against any mark not in bona fide use over three years prior to the request for cancellation. It is, of course, difficult to prove that something has not happened, but the mark owners were informed of the cancellation request and did not respond. Although the burden of proof is with the party requesting the cancellation of the mark, this burden of proof moves from side to side as the proceedings progress.
The Arbitrator of IP, Ms Yaara Shoshani Caspi criticized PCZL for using a trainee to look into usage and not a private investigator with some training, and considered the evidence as having low value. Nevertheless, in view of the lack of response from Brimag, she ruled that the mark be cancelled and also ruled 2000 Shekels costs against Brimag.
Ms Yaara Shoshani Caspi’s criticism of PCZL’s sloppiness is correct. A simple Google search of the Internet for AXXON and BRIMAG proves that the mark is actually in use. It is related to in the 2012 financial reports for Brimag: http://lxsrv1.bizportal.co.il/bizportalnew/bursamess/gif/e05310.pdf (see page 23 for example. this came up in a very simple Internet Google search.
There are various special offers for AXXON steam irons where Brimag is apparently the importer and service provider. See for example:
The mark in question is actually for electromechanic and electronic apparatus included in class 9; apparatus for recording, transmission or reproduction of sound or images; measuring, signalling, checking (supervision) apparatus; magnetic data carriers; videocassette recorders; televisions; projectors; video cameras; facsimiles; amplifiers; loud speakers; compact disc players and recorders; laser disk players; receivers; digital versatile disk (DVD) players; stereo systems; minidisk players and recorders; discmans; radios; telephones; headphones; microphones; parts and accessories for the above mentioned goods; all included in class 9.
Arguably, steam irons are not covered by the class. That as may be, trainee lawyers do not have the training to provide evidence of non-use. Their supervisors should indeed be aware of this, and should provide guidance. Nevertheless, Brimag (and their representatives Wolf Goller Bregman) did not respond to the request for cancellation and so whether or not the mark was not in use over the past three years, they cannot really complain against this decision.
Although the search I did took two minutes, I don’t think that arbitrators at the Israel Patent and Trademark Office are required to do their own inquisitorial inquiries and can generally be expected to simply weigh up the evidence provided. If Taser now files their own mark, Brimag can show prior use, but that would require them to be trademark savvy and this does not seem to be the case.