Is Leapfrog trying to jump ahead at Sony’s expense?

Sonicgear

Leapfrog Distribution PTE LTD filed Israel trademark application No. 240389 for SONICGEAR.

The application covers “Audio devices, including but not limited to: speakers, multimedia sound systems, docking stations, radios, radio clocks, portable multimedia devices, headphones, headsets, microphones, earphones, audio cables and accessories; all in class 9.

On the mark being published for opposition purposes on 31 October 2012, the Sony Corporation filed an opposition.

Sony frog

Sony’s claims

Sony claimed to be a world leading brand of electronic goods including video game consoles and telecommunication equipment with worldwide reputation, including Israel, with a range of branded products that are identified with Sony. Since the company name Sony is well established, it may considered a Well Known Brand and is entitled to wide protection.

According to the Opposer, there is a similarity between the Applicant’s mark and their name, both phonetically and visually, and so the mark lacks distinctiveness in contradistinction to Section 8a of the Trademark Ordinance.

The Opposer (Sony) claims that a connection between the Applicant’s mark and their own will damage the reputation of years and cause a dilution of Sony’s name. Sony accused Leapfrog of trying to free ride on Sony’s long established reputation which is the result of years of cultivation, and so claims that the registration of the mark is inequitable behaviour and contrary to the public good.

Leapfrog’s claims

Leapfrog was established in 1999 and has sold electronics under the name SONICGEAR for more than a decade. SONICGEAR’s goods have been sold in Israel since 2006. The requested mark has been in use in Israel since 2008 and has developed its own reputation.

Leapfrog denies a likelihood of confusion since both Sony and Sonicgear have developed their reputations over years. Leapfrog claims that Sony has lived with their use of the SONICGEAR branding for years and are thus estoppeled from opposing it, and their opposing it now is itself inequitable behaviour.

Evidence

Leapfrog further claims that the marks look and sound different and that there are very many marks that start with the prefix SON in Class 9 of the Trademark Ordinance.

SONY submitted an affidavit of the Head of Trademarks at SONY that shows the rating of the SONY mark in Japan, examples of branding publicity for Sony in Israel and lists of SONY’s trademark registrations around the world.

Leapfrog filed an affidavit of their CEO showing sales of the SONICGEAR brand over the previous five years and examples of their trademark registrations.

Both sides gave up on the right to cross-examine.

Ruling

Citing Supreme Court precedents, Deputy Commissioner Jacqueline Bracha ruled that where the parties agree to accept testimony without cross-examination this adversely affects their rights to challenge the facts presented in the testimony but this does not bind the court to accept the affidavits at face value.

In this instance, the two affidavits may be used to build a picture of the relative usages but the court has to bear in mind that the affidavits were not challenged.

As to the Opposer’s challenge to the distinctive nature of the mark, Section 8a states that a mark cannot be registered unless it may be used to distinguish between the goods of the registrant and those of competitors. Ms Bracha ruled that the purpose of the Section is to prevent parties from monopolizing generic words. She considers that the distinguishing features of a mark have to be considered by looking at the mark in isolation, without considering competing marks. The issue is whether the mark is descriptive or laudatory, not whether it is confusingly similar to other marks.

Consequently, Ms Bracha ruled that better grounds of opposition might be 11(9) or 11(13) as Sony’s marks are registered and they are claiming a likelihood of confusion.

She went on to apply the triple test and ruled that the as far as the appearance and sound of the mark were concerned, the marks should be considered in their entirety and not broken down into syllables or parts. SONICGEAR does not look or sound like SONY. The mark is also stylized with distinctive graphic elements.

The prefix sonic implies audio and is thus generic descriptive, and not fairly monopolizable by Sony. She noted that it was true that many other firms were actively using marks starting with or including ‘son’, but did not consider this as being grounds for registration per se. Nevertheless, since other players were using the syllable / sound, it weakened Sony’s argument that there was a likelihood of confusion.

The hard G in the middle of Gear is audibly dominant. Furthermore, as a stylized ON-OFF button, it is graphically distinct. She then went on to cite the Appeal of the Killy – Killa decision (considered by former Commissioner Dr Noam as confusingly similar, but overturned by Judge Ginat of the Tel Aviv District Court).

As far as the clientele is concerned, there is certainly overlap but Ms Bracha did not consider that there was a likelihood of confusion, and certainly no evidence of their being a likelihood of confusion was submitted.

Under other considerations and common sense, MS Bracha accepted that the prefix Son was not distinctive and noted that Leapfrog also had a second stylized mark Powerlogic where the Os were jack-plugs similar to the C of Sonicgear, and this strengthened the identity of the mark with Leapfrog’s.

As to Sony being a well-known mark, Ms Bracha accepted this, but explained that the significance of this is covered by Section 11(14) of the Trademark Ordinance, i.e. that an identical or confusingly similar mark could not be registered in a different class if this could create a likelihood of confusion. In this case, since she had concluded that the marks were not confusingly similar, the issue was moot.

In terms of unfair competition, Ms Bracha ruled that merely establishing that a competing mark is wel known is insufficient. A likelihood of confusion is also required and no evidence of this was submitted.

The grounds of Public Interest were considered not relevant, since these were limited to marks that were widely considered offensive, and that wasn’t the case here. As to inequitable behaviour, Ms Bracha referred to the Pioneer decision instead of repeating it again, and also noted that although alleged, no evidence was submitted.

The Opposition was refused and Ms Bracha awarded the Applicant 2000 Shekels costs and 13,000 Shekels + VAT in legal fees.

Ruling: Opposition to Israel Trademark 240489 “Sonicgear”, Sony vs. Leapfrog Ms Jaqueline Bracha, 10 August 2014.

Comments

This was a well-reasoned response. That cannot be said of the Opposition as filed.

If the Opposer chooses to oppose a mark based on one legal argument and is unable to prove his case since the legal basis chosen was wrong, why should the Patent Office raise legal issues such as Section 11 which were not raised? After all, an Examiner had already decided that the existence of Sony’s marks were insufficient to prevent registration and Sony (via their Counsel, Dr Shlomo Cohen, Law Offices) did not challenge this under Section 11.

The Chinese do seem to often choose marks that are at least reminiscent of and perhaps inspired by brand-leaders. Sonicgear is somewhat reminiscent of Sony and of Panasonic, and this case reminds me of the Lovol – Volvo decision.

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