Royal – the Great Center for American Clothing, LTD filed Israel trademark application no. 236655 for Royal Clothing. the mark covers clothing, shoes and head coverings in class 25.
Broadway Hassidic Clothing LTD opposed the registration claiming to have exclusive rights in the term Royal, and that the mark should be refused as lacking distinctiveness when compared to their (non-registered) mark. The mark could confuse the public and support unfair trade, and was filed in bad faith.
Broadway Hassidic Clothing LTD claimed to be the leading purveyors of Hassidic garb, including trouser suits, shirts, study gowns and Shabbat cloaks, with multi-million dollar sales in Israel and abroad, and stores in Hassidic-Hareidi centers including Jerusalem, Bnei Barak, Ashdod, Beitar, Bet Shemesh and New York. In addition to their stores, they held seasonal sales. Although not having registered the brand, Broadway Hassidic Clothing LTD claimed to have used the brand name Royal since 2009. The Applicant, Royal – the Great Center for American Clothing, LTD, has a couple of shops in Ultra-Orthodox population centers Israel and claim to have exclusive rights from the brand owners in the US, who also failed to register their mark. Back in 2011, Royal – the Great Center for American Clothing, LTD opposed Israel Trademark Application No. 235810 for Royal Clothing, opposed a registration by Broadway Hassidic Clothing for a stylized mark. That application was abandoned. Meanwhile, Broadway Hassidic Clothing LTD now has a pending trademark application no. 244009 for the word “Royal”.
The applicants and opposers submitted various affidavits and statements and a hearing was heard. The problem was that neither side could show that they had registered rights in the US, or, indeed, had unregistered rights there. Both statements of case left gaps in the chain of ownership.
The opposer didn’t claim rights to the mark in question, but claimed rights to the word Royal, which is only part of the mark in question.
The Commissioner ruled that the Opposer had not succeeded in proving rights to the word Royal, and even less so to the mark in question which was sufficiently distinctive to be registerable. Even were the Opposer to demonstrate rights in the word Royal, that He ruled that the mark could be registered and both parties could submit requests for costs.
The Commissioner seems to have done a reasonable job applying trademark law to a case where neither side had paid attention to trademark issues in a timely manner and where the underlying facts are obscured. It doesn’t seem that either party has royal connections or fabricates clothing by royal appointment. It is difficult to imagine any member of the UK Royal Family wearing Hassidic style clothing.