“I see nobody on the road”, said Alice.
“I only wish I had such eyes,” the King remarked in a fretful tone. “To be able to see Nobody! And at the distance too! Why, it’s as much as I can do to see real people, by this light!”
Through the Looking Glass, Lewis Carrol
Fin. Ing S.R.L. owns Israel Trademark Number 207810 for Reporter as shown above. The mark covers clothing, footwear, headgear; all included in class 25.
On 19 August 2014, Richemont Internationals S. A. filed a cancellation proceedings claiming a lack of use during the three previous years. Fin. Ing. S.R.L. did not file a counter statement of case, and so Richemont Internationals S. A. filed their evidence which Fin. Ing. again ignored.
On 24 December 2014, Richemont Internationals S. A. requested that the Patent and Trademark Office issue a ruling based on the material on file, without a hearing. Richemont Internationals S. A. admitted that the their interest in cancelling Fin. Ing.’s mark was due to their trademark application being refused.
Richemont International’s evidence included a notarized statement from their lawyer in Switzerland, that, following investigations, to the best of their knowledge, the mark owners had not used the mark in Israel within at least the previous three years within the class under which the goods were registered, or for clothing, footwear or headgear at all.
Under Section 41, any third party can request cancellation of a trademark on the ground that there was no intention to use the mark or that it had not been used within three years.
Trademarks are considered property rights to all intents and purposes and these rights should not be easily abrogated. Consequently, the burden of proof of lack of use rests squarely on the challenger. The challenger can submit his evidence, and then the burden of proof switches to the trademark owner, and the burden switches back and forth.
When considering use of a mark, the usage may be minimal (see Amir Friedman Trademarks, Law, Rulings and Comparative Law, Ferlstein 3rd Edition, p.p. 488-489), see also the trademark ruling concerning 14630 and 13296 “DIVA”.
In this instance, there is an objective problem to show lack of use, since the affidavit of the Swiss lawyer was written by a foreign national relying on inquiries made locally that were not specified. The identities of the private investigators used, their activities and the dates that these took place were not detailed. Statements of the private investigators themselves should have been submitted. Thus the cancellation request was rejected as insufficiently substantiated.
Ms Shoshani-Caspi noted that the cancellation proceedings were unchallenged, but considered that the mark holder was required to defend himself from fairly based challenges, and, where insufficient evidence of non-use is submitted, the mark remains unscathed. This finding is in accordance with Section 71a of the trademark regulations 1940 that state that if the mark ruler ignores a cancellation request under section 70 and does not respond within two months, the Commissioner will alert the mark holder and give him two months to respond. If the requester for cancellation submits evidence, the Commissioner will give him an opportunity to present his case and will only cancel the mark if convinced that it is correct to do so.
Not finding the evidence convincing, Ms Shoshani Caspi ruled that she could simply ignore the request for cancellation. Nevertheless, since the mark holder had not done anything to protect the mark, she gave the representative of the mark holder until 22 February 2015 to choose between cancelling the mark and respond showing use.
The initiator of the cancellation proceedings was given until 5 March 2015 to present more convincing evidence and following this, a ruling would be given.
No costs were awarded.
Ruling concerning cancellation of Israel Trademark Number 207810 for Reporter, the mark owned by Fin. Ing S.R.L. and challenged by Richemont Internationals S. A. Ruling of 5 February 2015.
Ms Yaara-Shoshani-Caspi is well within her rights to argue that the initiator of the cancellation proceedings had not established that the mark was not being used. The problem is that whereas it is possible to provide evidence of use, one cannot actually provide evidence of non-use.
That is, of course, the purpose behind the quote from Through the Looking Glass at the beginning of this post.
Richemont are represented by Eitan Mehulal who seem to have been unable to win an uncontested proceeding. Meanwhile, Reinhold Cohen was the agent of record who was obliged by the adjudicator to get a decision from their client, appears to have now been replaced by Colb. Go figure.