Kerem Ben-Zimra – Competing Marks

competing wine

David Nachmias filed Israel TM Application no. 258163 for “Kerem Ben Zimra Winery” The Hebrew word kerem means vineyard). Not long afterwards, Yekev Ben Zimra LTD filed Israel trademark application number IL 258562 for יקב בן זמרה (transliterates as Yekev Ben Zimra and means Ben Zimra Winery) and IL 258563 for Ben Zimra Winery. All the marks cover wines in class 33.

Since the marks are similar and were co-pending, in January 2014, the Israel Trademark Office initiated a competing marks procedure under Section 29 of the Trademark Ordinance 1972.

In competing rights procedures, the first to file (in this case Nachmias) does not necessarily prevail. Other factors to be considered are the extent of use of the marks and whether there is inequitable behaviour of either or both parties. The parties are given an opportunity to file evidence to support their rights to the mark.

In this instance, the parties did not file evidence and in August 2014 the Trademark Office gave one month’s notice to the parties to file evidence or the marks would be considered withdrawn. This was ignored, so Ms Yaara Shoshani Caspi closed the files but noted that the parties could refile their applications.

COMMENT

Kerem Ben Zimra is a village near Tzfat that was founded in 1949. It takes its name from the Rabbi from the period of the Mishna, Rav Yossi Ben Zimra haCohen, whose grave is found in the village. David Nachmias and Yekev Ben Zimra both have addresses in the village.

There are other wineries in Kerem Ben Zimra. The Adir Winery has a range called Ben Zimra. The wines produced in Kerem Ben Zimra have a good reputation. As always with competing use for a place-name, it is not clear whether either or both parties should be able to register their marks. In this instance, the parties seem to have backed off a legal battle. It could, however, be a case of both sides losing. What is clear is that there is a likelihood of confusion if two or more wineries call their produce Ben-Zimra.

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