Transferring A Contested Trademark to a Limited Company

pama

Abad Elrazak Abido is the owner of a registered trademark number 244831 for Pama, for shoes. He wishes to transfer ownership to a limited company: Pama Shoe Manufacturers LTD and to a partnership called Pama Porza, and submitted a request for transfer of ownership signed by him and the company.

This is actually the second attempt to transfer ownership, where the first attempt was dismissed on procedural grounds. Following that first attempt, an appeal was filed to the District Court. This appeal is pending, but meanwhile the owner has again submitted a request to transfer the mark and the present ruling relates to this request.

Section 48a of the Trademark Ordinance 1972 allows both pending and issued marks to be transferred from one owner to another, but gives the commissioner the right to refuse to register the transfer of ownership if it appears to be likely to confuse the public as to the origin of the goods or apparently contravenes the common good.

Puma S.E. opposed the transferring, arguing that the request had procedural flaws. In addition, they claim that the request is designed to create anonymity regarding the source of the shoes. The logic presumably being that the mark is being used to sell counterfeit shoes and Puma prefer to litigate against a person than a company as it is easier to collect if they win.

The Applicant submitted a Palestinian Authority trademark decision concerning a similar opposition, where registration of the mark Pama was allowed, and also submitted a certificate of incorporation, showing that the company to which the mark is to be transferred is properly incorporated in the Palestinian Authority (West Bank). The Applicant further claimed that there was a mediated settlement between him and Puma that allowed him to sell shoes under the PAMA brand in Israel and in the West Bank. The existence of the partnership remains a little cloudy.

Ms Shoshani Caspi ruled that the parties should submit affidavits and then attend a hearing where the relationship between Abad Elrazak Abido, the company and the ‘partnership’ could be clarified by cross-examination of the parties by the parties. Until such a hearing, she felt unable to address the issue of the public good. She noted that Mr Abido rights were not being compromised, as he would have the opportunity to provide additional documentation to substantiate his case. In the meantime, the request for transfer of ownership is suspended and no costs were-ruled.

COMMENT

Those with an interest in trademarks that are inspired by and somewhat similar to the marks of leading brands will note the four striped sneaker opposed by Adidas that was appealed to and upheld by the Supreme Court. Also of note is the Tigris decision which I am somewhat critical of, as it doesn’t relate to sports goods.

I have a working relationship with a Shechem (Nablus) based trademark lawyer which may help clients registering and enforcing in both the West Bank as well as in Israel. I suspect that proceedings are very different before the two regimes.

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