Cost ruling re Brands’ Bosco Brand

Brands Environment Establishment filed trademark applications 239210 and 240584.

Bosco

TM 239210 is for the logo BOSCO as shown above, which covers Furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics specifically excluding industrial furniture such as modular work place units, including work tables, workbenches and work seats in class 20, For Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats in class 29, for Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice in class 30 and for Architectural and design services, services linked to interior design in class 42. As originally filed, the mark  also covered goods in classes 9 and 12.

TM 240584 is for the word mark Bosco and covers Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices in class 3, Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments in class 14, Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery in class 18, Furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics specifically excluding industrial furniture such as modular work place units, including work tables, workbenches and work seats in class 20, Clothing, footwear, headgear in Class: 25, Games and playthings; gymnastic and sporting articles not included in other classes, decorations for Christmas trees specifically excluding toys that resemble power tools or kitchen appliances in class 28, Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats in class 29, Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice in class 30, Advertising; organisation of exhibitions for commercial purposes; business management of sales outlets; business consultancy relating to franchising; retailing of cosmetics, perfumery, spectacles, watches, jewellery, stationery items, furniture, chinaware and tableware, leatherwear, bags, handbags, suitcases, trunks and travelling bags, textiles and textile goods, bed and table covers, clothing footwear and headgear, gymnastic and sporting articles in class 35, Education; providing of training; entertainment; sporting and cultural activities in class 41, and Services for providing food and drink; temporary accommodation in class 43.

As originally filed, this mark covered classes 9 (Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus), class 12 (motors and engines for land vehicles; couplings and transmission components for land vehicles; and air cushion vehicles) and class 42 (services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer programmers, etc.).

The trademark applications were filed through the Madrid Protocol where, among other countries, Israel was specified . In response to Robert Bosch LTD filed a detailed opposition to the registrations in classes 9, 12 and 42. The Applicant did not file a counter-statement.

Consequently, according to a ruling published on 12 January 2015, these marks were considered successfully opposed in classes 9, 12 and 42 by Robert Bosch LTD and the registrations were amended accordingly. Robert Bosch then requested costs of 3208 Shekels in fees and 2200 Euros in lawyer’s fees.

Ms Shoshani Caspi  ruled that in general, the losing party should bear costs. In this case, however, the request for costs was not sufficiently detailed for the adjudicator to decide that they were reasonable, justified and proportional. The case was closed early on after the Opposers filed their detailed statement of case but did not have to respond to arguments.  Then again, the applicant failed to note that the applications were being abandoned. In conclusion, Ms Shoshani Caspi ruled fees + 4000 Shekels.

COMMENTS

Presumably, Bosch’s representatives informed them of the Bosco marks, received instructions to oppose, filed two oppositions with detailed statement of cases, monitored for responses, reported the successful opposition and requested costs.  Even if the request for costs was insufficiently detailed, I don’t think that 4000 Shekels costs is very much for this amount of work.

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