Millenium Marketing Intertrade (1999) LTD. filed Israel Trademark No. 239054 for the word mark “Arcosteel”.
Not surprising, considering their earlier opposition for a stylized mark, Arcos Hermano S.A. filed an opposition to this mark.
The Opposers requested that a hearing be delayed since there were four parallel proceedings which should be amalgamated and heard in one go. They claimed that their witness, a Mr Rosenfeld could not be able for the hearing as scheduled due to prior commitments.
The other three cases concern TM 241329 “Arcos” in class 21 and 247988 “Arcos” in classes 8, 21 and 35, opposed in class 21, and TM 248994 for Arcosteel in classes 7 and 11.
The present word mark for Arcosteel was filed in classes 8, 21 and 35, but after cutlery in class 8 was amended to recite cutlery excluding Chef’s knives and professional knives, the opposition to class 8 was dropped.
Since Opposer has no longer objections re classes 8 and 35, the Deputy Commissioner, Ms Jacqueline Bracha has ruled that the mark be allowed to register in those classes.
As to combining the cases, since there are a further two applications – 252214 and 256226 that have not been opposed yet, she did not see fit to combine those cases.
Regulation 520 authorizes the courts to combine similar actions so long as there are similar legal questions. Since the oppositions concerning TMs 239054 and 241329 relate to similar questions of interpretation of the trademark agreement between the parties, she ruled that these should be combined.
TM 247988 also relates to the interpretation of the agreement but additionally relates to likelihood of confusion. Nevertheless, she saw fit to combine that case as well. However, TM 248994 concerns classes 7 and 11 and is beyond the scope of the agreement, so she did not see fit to combine that case in the current proceedings.
As the request to combine the cases was filed late and the opposing party had consequently incurred expenses, she ruled costs of 600 Shekels + 6000 Shekels legal fees against Arcos Hermanos.