Ella Moss, are there grounds for Judicial Estoppel?

Ella Moss

Israel Trademark Number 241679 “Ella Moss” (the word mark, not the mark with butterfly, but it is a nice illustration, and this isn’t the sort of blog where we feature models in swim-wear) was filed by Mo Industries LLC. the mark covers clothing, namely, tops, bottoms, pants, skirts, jackets, coats, sweaters, cardigans, dresses, vests, ties, sleepwear, lingerie, undergarments, swimwear, rompers, baby bodysuits, layettes, activewear, namely, tops, bottoms, athletic clothing, sweatshirts, sweatpants, sweatshirts and jerseys, outerwear, namely, coats, jackets, parkas, vests and fleecewear, belts, footwear and headwear; all included in class 25 and retail store services featuring clothing and accessories, belts, footwear, headwear, purses, jewelery; all included in class 35.

Shimon Bodakov filed an opposition to the mark.

The interesting wrinkle in this case is that there is a corresponding case, Israel trademark no. 242680 “Ella יופי שנוח לך” (literally Ella, comfortable beauty) covering Clothing, footwear , headgear in class 25, that was filed by Shimon Bodakov and is being opposed by Hachette Filipacchi Presse. Shimon Bodakov is represented by Gabriel Kramer, and both Mo Industries LLC and Hachette Filipacchi Presse are represented by Dr Shlomo Cohen Law Offices.

The “Ella יופי שנוח לך mark is reproduced below.

Ella

In this case, Mo Industries requested that the trademark opposition be thrown out since in the 242680 case Bodakov / Kramer argued that there was no similarity between Ella Moss and  the graphical mark Ella יופי שנוח לך, whereas in the current case they are arguing a confusing similarity between the marks. Due to the contradictory arguments, the opposition should be thrown out.

Bodakov / Kramer responded that there is no estoppel. The other, ongoing opposition was indeed filed first, but has not been ruled on, and it is the job of the Commissioner of Patents and Trademarks to decide whether or not there is confusing similarity or a likelihood of confusion. In the meantime, there is no reason why they have to be consistent.

The Ruling

The principle of Judicial estoppel is that a party claiming one thing in one case, once that claim is accepted, cannot deny that claim or make a contrary claim in a later case, even against a different party. A guiding principle of the Judicial estoppel is that the party succeeded in the earlier case. See 513/89 Interlego A/S vs. Exin-Lines Bros. S. A. and 6753/96 MM. Ch. T. vs. Friedman. The rationale against requiring success in the first ruled case is to prevent contradictory rulings by the courts.

In more recent rulings, the principle that the first case has to be successful is left open,  and it appears that there is no definite ruling on the issue. See 4224/04 Bet Sasson vs. Shickun Ovdim v’Hashkaot LTD. and 6181/08 Vinoker vs. The Head of VAT in Acre. The current trend is to look at the issue of equitable behaviour of the parties.

In this instance, there are two parallel opposition proceedings concerning Ella Moss and Ella יופי שנוח לך. In the 242680 case, Bodakov / Kramer argued that the two marks are not confusingly similar, and in the current case, which was filed later, Bodakov / Kramer filed an opposition on the grounds that the two marks were confusingly similar.

Nevertheless, it is not clear that there is a judicial estoppel in this case, since there has not been a decision. Furthermore, it is difficult to claim inequitable behaviour on the part of Bodakov / Kramer since they are simply interested, that should the Commissioner of Patents and Trademarks decide that the two marks are indeed confusingly similar, that their mark should be preferred. Furthermore, should the opposition to 241679 be cancelled, then the mark would automatically be allowed and this would hobble Bodakov / Kramer since they would have to fight an issued mark and not a pending one.

Due to the seriousness of throwing the case out based on the estoppel and inequitable behaviour construction, which would deprive the Opposer of his day in court, and noting that the case-law does not consider arguments in pending cases as estoppeling, Ms Shoshani Caspi (the adjudicator of the case) rejected the request to throw the case out.

At the focus of both cases is the question of the confusing similarity between the two marks, however the parties are not identical so Ms Shoshani Caspi considered that it would not be fair to combine the two cases. the request for throwing out the opposition was rejected, but in the circumstances, no costs were awarded.

Ruling in Ella Moss, 22 July 2014.

Comments

As the marks are identical and the lawyers are identical, despite the different parties represented by Dr Shlomo Cohen Law Offices in the two cases, it could be argued that there are good grounds to combine the cases, or at least to offer the parties the opportunity to fight the two cases together. Such a development would save valuable time for the arbitrators at the patent office. It is,  however, correct for Ms Shoshani Caspi to overcome the temptation. Hachette Filipacchi Presse could conceivably want to challenge Ella Moss, for the same reasons that they have challenged Ella יופי שנוח לך. One assumes that the issue involves the word Ella for women’s fashion. Combining the cases could therefore result in Dr Shlomo Cohen Law Offices representing both Hachette Filipacchi Presse and Mo Industries LLC and  having to argue that Ella is both distinctive and generic, and that would seem to raise judicial estoppel. It would seem unlikely that in a combined action they could fairly represent the two parties to the best of their ability. Also, working out how to charge two parties sharing a combined case could be complicated.

The ruling provides insights into the concept of Judicial Estoppel and is a valuable intermediate ruling.

 

 

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