Mr Alan Pocrass filed Israel Trademark No. 233310 for the wordmark XMULTIPLE for Electrical, electronic and fiberoptics connectors for data, telephone, cable, television and computers, namely, RJ connectors, coaxial connectors, coaxial and flat-ribbon interconnect systems and ethernet switches; all included in class 9. The application was filed on 27 October 2010 and the Notice of Allowance published for opposition purposes on 31 May 2011.
Xmultiple Technologies, Inc. opposed the mark. On 11 September 2013, the parties filed a joint request for a specific procedural arrangement under which a scheduled hearing would be canceled and the Commissioner would rule on the evidence and summaries submitted by the parties.
XMulptiple Technologies, Inc is a leading Taiwanese manufacturer of industrial electronic equipment that provides components to manufacturers worldwide and including Israel. Since 2002 electronic components have been sold under the XMultiple brand and currently there are more than a million dollars worth of components sold in Israel each year. The director of XMULTIPLE had a business relationship with the Applicant from 1999 but this finished in 2010 and the Applicant owes Opposer some million dollars. The applicant continues to use the mark and to provide customer support to XMULTIPLE products.
The Opposer claimed hat they were the true owner of the mark and that the Applicant had trespassed on their rights by attempting to register the marks in Israel and elsewhere. The Opposer considered the attempt to register the mark was against public order under Section 5(11) and, since it was identified with the Opposer contravened Section 6(11) and was a false indication of origin. The business practices of the Applicant were unfair competition. The Opposer alleged that the Applicant was selecting inferior goods from other suppliers under the trade name XMULTIPLE . Since the Opposer was called Xmultiple, the Applicant’s branding of their goods as XMULTIPLE contravened Section 12 of the trademark Ordinance. Furthermore, the Opposer claimed that the mark lacked distinctiveness under Section 8(a). Finally, since the marks were used by the Opposer, they could not be registered under Section 11(13).
The Applicant counter-claimed that he had many years of experience in the electronic component industry and that he’d set up an American company called XMULTIPLEtechnologies Inc. In 1999, before the establishment of the Taiwanese company and collaboration between the two companies. The company was set up to market a patented component and the collaboration with the Taiwanese company was to manufacture this patented component.
The parties submitted their arguments, and then the Applicant submitted a Taiwanese ruling from a corresponding proceedings and requested that this should estoppel the Opposer. Because of the territorial aspects of trademarks the Commissioner believed that in general decisions of foreign courts are not given much weight.
The Opposer was unable to show that they had a reputation in the mark in Israel. Despite the business disagreements between the parties, the registration of the mark in the name of the Applicant wasn’t considered as contravening public order. In conclusion, the Opposition was rejected and the mark was allowed to be registered. The parties were invited to submit their requests for costs.
The decision is probably a correct one. If the parties had a reasonable written contract between them, it would be easier to ascertain who had better rights to the mark. I note that the Opposer claimed that the mark lacked distinctiveness under Section 8(a). I find it a little amusing that the Opposer argued that the name XMULTIPLE lacks distinctiveness, whilst simultaneously calling themselves Xmultiple and claiming rights to the mark. In the legal world, these things happen.