B144.co.il vs New 144 on Competing Marks, distinctiveness of a number and cybersquatting

Directory Inquiries for Bezeq, Israel’s historic telephone service was reached by dialing 144. Since the mobile phone and fiber-optic cable revolution, there are now lots of competing cellular and satellite phone providers and cable entertainment networks also provide phone services. Each supplier has its own directory inquiries, and dedicated websites.

On 3 April 2012, Mr Yossi Lotem filed a trademark for New144, for advertising, business administration business services, office services and shops in Class 35.

On 22 July 2012, Bezeq Israel Telecommunications LTD submitted a number of trademarks for stylized logos for b144.co.il, which is the Internet address of their online telephone directory website. The marks were submitted for Computer applications, electronic indexes, Mobile phone applications, Internet Applications, digital databases, directories and different services in Class 9, for managing databases, publicity, providing business services, business consultancy, office services and business databases in class 35, for telecommunications, communications, providing communication services,

The various logos included different slogans “all businesses in one website”, “helps you to chose”, and “All business and all people in one website”

b144.co.il   b144.co.il1  b144.co.il2

The patent office considered the marks as confusingly similar and as the parties were unable to come to an understanding, a competing marks proceeding was initiated.

In addition to competing marks, this ruling relates to procedural issues, fighting trademark battles without legal representation, inequitable behavior and cybersquatting. It also touches on whether numbers alone are registerable.

Lotem submitted his affidavit requesting examination on the merits. Bezeq submitted a statement from their Head of Information Marketing and Databases. It transpired that both parties have been providing internet publicity services, creating mini-websites for companies together with contact details.

Originally Lotem was represented, but his counsel requested to be released from his obligations with client’s consent, and so Lotem was cross-examined without representation.

The parties filed summaries and responses to the summary. Before ruling on the main competing marks issue, the Deputy Commissioner, Ms Jacqueline Bracha addressed a request by Bezeq for various parts of Lotem’s summary to be struck from the record as being an inadmissible widening of issues under discussion.

The admissibility of evidence and new claims in summations 

Bezeq claimed that the material related to new issues raised without submitting evidence and so should be considered invalid. Some was hearsay, and some was irrelevant. Lotem claimed that the material was with his counsel and he only learned about them late in the proceedings, but the material related directly to whether Bezeq had rights in 144. The legal issue was essentially whether in a competing marks ruling, evidence regarding the cancellation of a mark could be submitted.

Lotem did not accept that this was new material that went beyond issues discussed in his statement and that of Bezeq’s witness. Bezeq argued that they could not relate to the issues as they weren’t submitted at the proper time and in the proper manner. The information that Lotem wished to submit related to regulatory rulings concerning Bezeq’s activities that were designed to limit their monopoly and Lotem further noted that attempts by Bezeq to obtain a trademark for the number 144 alone were rejected. Lotem’s case wasn’t helped by him submitting statements headed as “affidavit” and ‘legalized’ by his nephew rather than by a lawyer.

In her ruling, the Deputy Commissioner Ms Jacqueline Bracha noted that the alleged inequitable behavior of Bezeq in using the requested trademark was not raised as an issue at the proper time and evidence was submitted after the evidence stage was completed. Furthermore, the additional material was not submitted by requesting late submission with appropriate justification, but was slipped into the conclusions without prior approval from the patent office.

Lotem’s excuse was that he was not represented and was not familiar with procedural issues. Furthermore, the procedural laws for civil procedures 1984 are not actually binding on the patent office. Ms Bracha acknowledged that the laws regarding widening the legal issues at late stages of a proceeding were court procedures, but ruled that they were generally applicable to patent office proceedings with modifications as necessary. Support was given (or at least reference was made to earlier decisions) from 147565 Orbotech vs. Camtek and from TM 158670 ruling concerning deletion of evidence re On line Marketing LTD. vs. Yoval Gorali et al.

In competing marks proceedings, traditionally the parties submit their evidence but do not submit statements of case. In a Circular from commissioner 013/2012 in addition to presenting evidence, the parties are cross-examined and may request permission to file contrary evidence. In this case such a request was not made.

MS Bracha noted that competing marks proceedings are adversarial and so each side should have an opportunity to present evidence and to challenge each other’s evidence. A corollary of this is that one cannot allow one side to submit new evidence late in the proceedings if the other side disagrees. Consequently, she ruled that Lotem cannot submit this new evidence at this stage. Sections 18-32, 24-37 of Lotem’s summary and appendices 5, 6, 7 and 9 are struck from the record as are sections 8, 10 and12 and appendices 1-5 of the response Lotem made to Bezeq’s summary.

Which mark should be preferred? 

Substantively, in competing marks proceedings the issues include who filed first, but more importantly, the issue of extent of use and and equitable behavior is considered.

Lotem filed 3 1/2 months before Bezeq but this is considered insignificant. Indeed, Bezeq has other marks for “b144” and for “b144.co.il all businesses” that predated Lotem’s filings. Lotem showed that he’s filed a trademark for new144.co.il in 2010, and, between 2019 and 2014 had invested 200,000 Shekels in the project.  By 2014 he’d accumulated 40 clients and was making up to 20000 Shekels a month.

Bezeq started using the b144 and “b144.co.il all people. All professions” marks in question in 2010 and had some use of b144 since 2007 on Bezeq’s website.  Over the period from January 2008to 2013 Bezeq’ website was receiving 203 million hits a month with significant advertising revenue. Furthermore, Bezeq’s marks include b144 as a dominant element.

Ms Bracha ruled that the issue of whether 144 is a well known mark or indeed registerable is irrelevant and concluded that Berzeq had adequately shown more significant usage than Lotem.

As to equitable behavior, Ms Bracha accepted that this was critical in this instance, but did not see how Bezeq, with usage of b144 from 2007 could be accused of aping Lotem.

Lotem had used the website Israeli-business but decided that it was too long and then purchased new 144 after seeking professional advice and learning that the word new was desirable. Lotem originally denied being familiar with Bezeq’s website before filing his domain request in 2009 and only discovered it when Israeli-business appeared on Bezeq’s website. He argued that he did not request the website and that it was opened automatically when he purchased a business line.  However, Bezeq showed that the entry on Bezeq’s directory included a description of his services that Lotem himself had written and then he admitted having some prior knowledge of b144.co.il and of b144.

Additionally, Lotem was using the slogan “all businesses all professions” in a manner that was also more than reminiscent of Bezeq’s website. Bezeeq claimed that this was hardly coincidental. Lotem countered that unlike Bezeq he was not providing personal contact data for individuals but only business data and that the slogan “all businesses all professions” and variations thereof were widely used by other information providers and this was descriptive or his services, and there were only so many ways of describing such services.

Lotem argued that he wanted to use the word “new” and 144 was chosen as it is easily remembered. When asked what the number signified, he responded that it was an integer between 143 and 145.

The Deputy Commissioner accepted that this was a random number between 143 and 145 but noted that Lotem referred to his mark as new one four four and not as new one-hundred-and-forty-four, indicating that the subconscious motivation behind the random selection appeared to be the dial up number of Bezeq, since phone numbers are usually remembered as strings of single digits. Consequently the Deputy Comissioner ruled that in addition to scale of use, in terms of equitable behaviour Bezeq had a stronger case.

Lotem suggested coexistence under Section 30. MS Bracha ruled that coexistence in the same class required equitable behavior of both parties and was not convinced that Lotem had behaved equitably. Furthermore, the differences between clientele were not real differences. Both parties were providing business card type mini-websites to clients which was the same service. Consequently, she ruled that coexistence was inappropriate. Lotem mark was refused and Bezeq’s marks were allowed to continue for examination.

Lotem was ordered to pay 2000 Shekels in legal fees and 12000 Shekels in costs to Bezeq.

COMMENTS

This decision is more than reasonable. Since Bezeq’s monopoly was destroyed other parties can provide telephony services and Lotem can certainly provide a business directory and min-websites. The issue here is one of the choice of name. Lotem is a cybersquatter.

Numbers per se. are not considered distinctive and cannot be registered as trademarks. Intel called their fifth generation processors Pentium since despite the success of 286, 286 an 486 series PCs that revolutionized the personal computer industry, they did not have rights to the number.

In June 1994 Brian Lara scored 501 runs for Warwickshire against Durham setting a new world cricketing record. The clothing company that Lara was contracted to could have celebrated by issuing a celebratory 501 jeans. They didn’t as Levi-Strauss’ 501 design is so well known.

One is generally not advised to fight companies such as Bezeq without legal representation. Lotem’s arguments for the slogan were reasonable. Arguing that 144 was selected randomly from the numbers between 143 and 145 was not such a good idea.

Bezeq should approach ICANN to have the new144 website taken down. One cannot claim distinctiveness for adding the word new.

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