Accel Telecom Ltd. filed Israel Trademark Application Number 251612 for Voyager”.
The mark was filed for the following goods: Fixed car phones and connected smart car phones; all included in class 9, and for telecommunication services, namely, providing electronic telecommunication connections, namely, providing voice and data wireless communications connections to enable users to transmit, reproduce, receive, access, search, index and retrieve data namely, images, sounds, text, movies and animations between mobile communication devices and computer communication networks, the Internet, information services networks and data networks; Telecommunication services, namely, telecommunication access services, communication by means of mobile phones, cellular telephone communication, mobile telephone services; all included in class 38.
The mark was accepted on 26 February 2012 and an opposition was filed by Plantronix Inc. on 28 May 2013,
On 27 March 2014 the list of goods was changed to Electronic apparatus, namely communication apparatus, telephones, mobiles, modems, and routers for communication apparatus; all included in class 9.
Somewhat confusingly, the decision states that a decision issued on 9 December 2014. At the time of writing, we consider this date that is in nearly four months time, a little suspect. In that decision, the Patent Office refused to allow the mark to coexist with Plantronics trademark 255989 which is an identical word mark. Our write up of that decision, by Ms Shoshani Caspi, may be found here.
Beyond the requirements of the Law, Ms Shoshani Caspi gave the parties an opportunity to provide evidence for allowing a coexistence agreement, provided the evidence would be submitted at least 30 days before a hearing on the issue.
On 19 December 2013 the parties informed the Israel Patent and Trademark Office that they did, indeed, desire to submit such evidence, but failed to do so. Despite this, a hearing was scheduled for 5 March 2014. During that hearing an agreement was reached that was acceptable to the parties and to the patent office.
However, on 22 June 2014, the parties merely submitted legal arguments without addressing the issue of confusing similarity.
Citing section 30 of the Trademark Ordinance, Ms Shoshani Caspi noted that in extreme circumstances, the Commissioner could allow two mark owners to use the same mark for the same good, and referenced a number of relevant decisions.
The parties argued that each was using the mark for different goods, sold to different customers via different channels and consequently there was not, in fact, any likelihood of confusion.
In this case, Ms Caspi could not accept the argument since the general case, as stated in section 11(9) is that confusingly similar marks cannot be allowed, and in this case the two marks are identical word marks for the same word “Voyager”.
One mark lists the foods as car phones and smart phones in vehicles, and the other as telecommunication equipment, such as earphones, computers and telephony communication equipment, adapters and battery rechargers, so both marks cover car phones. Indeed, the mark in question also covers remote telephony equipment under Class 38.
Ms Shoshani Caspi rejected the argument that in practice, Accel makes car phones and Plantronix makes ear-phones, since she considers these goods complimentary and thus still confusing to the public as to the source thereof.
The parties argued that whereas allowing Aroma to be used by more than one vendor of coffee and cake, was confusing, the current situation was more similar to Great Shape and referred to the 2003 decision concerning marks 107479 and 105968. Ms Shoshani Caspi rejected this argument. She also rejected the argument that since the distribution channels were different, there was no likelihood of confusion as the same customer could conceivably purchase both products.
Citing the Eshel – Yotvata Eshel Supreme court decision (which quoted Friedman p. 431) , she went on to rule that as defender of the public interest she could not allow coexistence, and she referred the case back to the parties to submit evidence in the ongoing opposition.
Decision re Voyager coexistence, Accel Telecom vs. Plantronix, ruling by Y. Shoshani Caspi, 20 July 2014.