“The Duchess! The Duchess! Oh my dear paws! Oh my fur and whiskers!”

The Hunter Group Ltd. Pty which is a Thai company filed Israel Trademark Application No. 190,755 for a design including the word ‘Sleeky’ together with a couple of paw prints. The application is in class 31 and covers pet food including dog food and cat food; all included in class 31. The mark is shown here:

sleeky

The Iams Company (a US manufacturer) have a registered mark 91789 for a footprint as follows:

Iams poor-print

Their mark also covers foodstuff for animals in the same class.

In practice, the Iams company markets pet foods as the brands Eukanuba and IAMS together with the footprint as below:

Eukanuba nad Iams

When the Israel Patent Office allowed the 190,755 mark, the Iams Company filed an Opposition which was presided over by then Deputy Commissioner Noah Shalev Shmulevezh, and eventually rejected in a ruling in June 2012 by the Israel Commissioner of Patents and Trademarks, Asa Kling, based on the material in the file (without a hearing).

The Commissioner applied the ‘triple test’, and noted that although the goods and channels of marketing are similar, there is no likelihood of confusion since the marks sound different and look different, although the Hunter Group’s mark includes a couple of footprints that are somewhat similar to the Iams trademark protected footprint.

Under Section 25 of the Trademark Ordinance, Iams, represented by Dr Shlomo Cohen, filed an Appeal to the Tel Aviv District Court.

The Hunter Group Ltd. Part was represented by Adv. Yossi Bregman (Wolf Goller Bregman) and by my brother Adv. Aharon Factor acting Of Counsel.

Judge Ginat of the Tel Aviv District Court ruled that the issue is likelihood of confusion and the triple test serves as an indication of whether or not there is likelihood of confusion.

Iams considered that their mark was well-known, both in Israel and abroad, and Hunter’s mark was an infringing copy.

Iams tried to show that Hunter’s ‘expert witness’ was merely a local sales representative and no ‘expert’. Judge Ginat retaliated by noting that Iams expert has argued that Eukanuba was used for dog food and IAMS was used for ipkat cat food, whereas in practice it is the other way around.

Although Iams’ well-known mark has been in use since 1980, the paw prints are different. Also, Nestle Purina Petcare Company has a paw print mark 87,529 that was originally owned by Spillers and is also used for pet food in the same class. Their paw print is shown below:

nestle's paw print

When pushed, Iams’ expert acknowledged that Nestle’s mark bore some similarity to theirs, but argued that they weren’t filing suit against Nestle at present. Judge Ginat found it astounding that their expert claimed to be unaware of Nestle’s mark. Particularly as in their statement in the Opposition they claimed that Nestle’s mark was only registered with the Opposer’s consent.

Dr Shlomo Cohen claimed that since the Applicant in that case was the well-known company Nestle, Iams was prepared to allow them to register their mark but this does not confer any rights whatsoever to third parties.

Judge Gilat rejected this. He considered that the very argument countered the requirement of equitable behaviour and Iams are estopped from claiming confusion of the public, since no license was granted by Iams to Nestle, and one can’t selectively apply one’s rights against an insignificant player claiming a likelihood of confusion, whilst ignoring a serious competitor with a large market share.

To support this contention, Judge Ginat quoted Sir Nicolas Browne-Wilkinson V-C in Express Newspapers plc vs. News (UK) LTD, concerning claims and counter claims regarding copyright in articles that

“There is a principle of law of general application that it is not possible to approbate and reprobate. That means that you are not allowed to blow hot and cold in the attitude that you adopt. A man cannot adopt two inconsistent attitudes towards another: he must elect between them and, having elected to adopt one stance, cannot thereafter be permitted to do back and adopt an inconsistent stance”.

In the hearing before the Commissioner, Iams expert witness expressed a certainty that when the products are displayed side by side the consumer (i.e. the purchaser, not the pet) would be misled by the similarity. The Commissioner noted that this was speculative and no evidence was given for this beyond hearsay from store owners. No confused customers came forward to complain. Being unsubstantiated, Judge Ginat felt that the Appellant had failed to show that customers were confused and that their profits had suffered. Although the Opposer to the mark is not required to substantiate these allegations, Judge Ginat noted that it would have been wise to do so.  Furthermore, the marks seems to coexist quite happily in main jurisdictions including IAM’s home country, the USA, and there have been no TM oppositions in any other jurisdiction apart from Israel.

As to the triple test, Judge Ginat noted that in addition to the sight and sound of a mark, and to the goods and channels, the third strand of the five part trilogy was the “common sense test”, and noted that there were significant differences that ruled out customer confusion including the fact that the paw prints were appended by the Thai applicant to the brand name Sleeky. Sleeky sounds COMPLETELY different to both Iams and Eukanuba. The Appellant tried bringing the Supreme Court Decision 3976/10 Akisionerno Droujesto vs. Phillip Morrison to support the contention that there was a likelihood of confusion, but Judge Ginat considered that even accepting the fact the English is a second language and words could be mispronounced, the differences between Sleeky and Iams and Eukanuba were rather more striking than the similarity between Eve and Eva as cigarette brands, and didn’t see that this argument really advanced the appellant’s case.

In conclusion, Judge Ginat upheld the Commissioner’s ruling that the marks could coexistent and that both product lines could be sold side by side as they were worldwide Furthermore, the public interest was served by competition in the pet-food industry. Costs of 10,000 Shekels for legal fees was awarded to The Hunter Group Ltd.

Civil Appeal 3066.09.12 the Iams Company vs. Hunter Group Ltd. Part, re IL TM 190,755 before Judge Ginat of the Tel Aviv District Court, 11 February 2015.

COMMENT

Granted, I don’t purchase cat or dog food and have better English than most Israelis – some of whom have English as only a third language. Nevertheless, it seems clear to me that a paw-print, at best, indicates that the product contains pet food, and is for animal consumption, not human consumption. A paw print is at least strongly indicative that the product is intended for cats and dogs and so interpretation should be narrow and only a very similar footprint should be considered infringing. Two footprints of one form are not confusingly similar to one simplified footprint. With the brand-names clearly shown and so completely different, there is no likelihood of confusion so Judge Ginat is correct. However, no doubt IPKATS and ipdogs ip litigators everywhere will wait with bated breath to see if Iams and their representative appeals this decision to the Israel Supreme Court.

More Paws for thought:

“Pooh looked at his two paws. He knew that one of them was the right, and he knew that when you had decided which one of them was the right, then the other was the left, but he never could remember how to begin”

David said moreover, The LORD that delivered me out of the paw of the lion, and out of the paw of the bear, he will deliver me out of the hand of this Philistine. And Saul said unto David, Go, and the LORD be with thee.”

“Whenever you find yourself on the side of the majority, it is time to pause and reflect.” ― Mark Twain (R.L. Clements)

 

 

One Response to “The Duchess! The Duchess! Oh my dear paws! Oh my fur and whiskers!”

  1. Norine says:

    Great article.

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