Israel Trademark Application Number 238757 was filed by Itzik Peretz for the following image:
The Hebrew words mean (Mediation and Consulting for Real Estate).
The Application was filed on 27 June 2011 and after allowance, it published for Opposition purposes and an opposition was filed by Oded Lifshitz on 21 October 2012. A hearing was held on 23 March 2012 where both sides were invited to summarize their positions.
Itzik Peretz has an estate agent (realtor) business that has operated in the Netanya region since 2007. The firm operates under the name Home 4 U.
Oded Lifshitz ha operated in the same business since 1999. In January 2005 he filed Israel trademark application No. 177762 for HOME4U which was registered.
In 2008 Peretz looked for a website address for his business, and, on discovering that the home4u.co.il domain was not available, he registered Home4u.org.il.
In May 2011, Lifshitz sent Peretz a Cease & Desist letter and Peretz changed his website address to Home-4-u.org.il believing this to be sufficiently different to keep Mr Lifshitz happy. Mr Lifshitz was not satisfied with this and filed a suit in the Small Claims Court of Tel Aviv – Jaffa, claiming inter alia, trademark infringement.
The Court acknowledged trademark infringement, but due to a lack of evidence, did not award damages and threw out the case.
The Opposer’s Position
Lifshitz claimed that his earlier word mark home4u was sufficient grounds for the Examiner to have refused Peretz’ application.
Lifshitz supported his case with a declaration from himself and further statements from two other realtors who claimed to know him for several years. He argued that the proposed mark was confusingly similar to his registered trademark and to his store sign and it was totally irrelevant that Peretz had registered his company as Home 4 U Mediation and Consulting for Real Estate LTD.
The Applicant Peretz denied knowing the Opposer or his business prior to the case being filed against him in the Small Claims Court. Then he discovered that Lifshitz had a real estate business in the Tel Aviv region that was registered as Better Location LTD, a Place for My Home, and that Lifshitz had registered the www.home4u.co.il domain.
Peretz does not consider the his trademark application is confusingly similar to Lifshitz’ mark, and does not consider that Lifshitz is actually using his trademark. Furthermore, Peretz does not consider his application in any way similar to Lifshitz’ business name.
Peretz considers that since the Small Claims Court did not award any sanctions against him, Lifshitz is estopelled from claiming infringement of his trademark. Peretz considers the term home4u has become generic over the years and lacks distinctiveness. However, as a fall back position, he is willing to add the word in the Sharon which denotes the Sharon region around Netanya.
The Adjudicator of Patents and Trademarks, Ms Yaara Shoshani Caspi considers that the relevant grounds for opposition are sections 11(6) and 11(9) of the Trademark Ordinance 1972.
11. The following marks are not capable of registration:
(6) a mark likely to deceive the public, a mark which contains a false indication of origin, and a mark which encourages unfair trade competition;
(9) a mark identical with one belonging to a different proprietor which is already on the register in respect of the same goods or description of goods, or so nearly resembling such a mark as to be calculated to deceive;
Section 11(9) provides protection to a trademark owner from identical or similar marks being registered where there is a likelihood of confusion regarding the source of goods or services provided under the mark. Since the marks are not identical but are similar, it is necessary to consider the likelihood of confusion for goods or services covered by the marks.
Ms Shoshani Caspi then went on to apply the triple test as detailed in Pro-Pro Biscuits this Promein and in Bank Igud vs. Bank Agudat Israel, rejecting allegations that Lifshitz’ mark should be invalidated as being irrelevant to the Opposition Proceeding.
Section 11(9) was relevant as the services covered by the two marks is the same.
Sight and Sound
As to the sound of the mark, Ms Shoshani Caspi noted that one had to compare the marks as a whole, whilst noting that customers have imperfect memories.
Since the other words of the mark and the red roofed house graphic are generic-descriptive, the only part of the mark that is distinctive is HOME 4 U. Support for this position was found in Applicant’s witness’ testimony who referred to ‘the name Home 4 U with the red house logo’ and then stated that “as to how customers related to the firm, I ask them which realtor send them and they answer home 4 u.
Consequently, Ms Shoshani Caspi considered the appearance and the sound of the dominant element of the pending mark as confusingly similar to the issued mark. She did not consider that having spaces between the ‘home’, the ‘4’ and the ‘u’ was significant.
Clientele and Marketing Channels
Although the two businesses operated in different towns, that did not prevent a likelihood of confusion as the clients were interested in purchasing property and one or other of the concerns could open a branch in a different town.
In previous rulings such as Great Shape and Aroma, it has been noted that Israel is a small country, which makes a confusion between businesses operating in specific locations likely. Furthermore, both companies make extensive use of the Internet. Again, the fact that the Opposer uses a different moniker, i.e. Better Location is irrelevant as whether or not the opposer’s mark is voidable is not relevant to the present opposition proceeding. More relevant is that many real estate listings don’t allow graphic representation and the Netanya business thus advertises itself by name.
The Adjudicator noted that Lifshitz had alleged inequitable behaviour on the part of Peretz in choosing his business name but did not consider this proven. On the other hand, she rejected the estoppel argument noting that only the Patent & Trademark Office had the authority to register marks. Even putting that aside, the failure of the small claims court to determine that there was no infringement of Lifshitz’ mark did not mean that Peretz’ mark was registerable as the legal questions were different.
Since the marks were confusingly similar and were directed to the same clientele and marketing channels,, without other issues being significant, the Opposition could be accepted making consideration of Section 11(11) redundant.
Unnecessarily, Ms Shoshani-Caspi went on to consider Section 11(6) anyway. Here she did not find the evidence conclusive.
Ms Shoshani-Caspi ruled that the Israel Trademark Application Number 23857 be canceled and awarded 9000 Shekels costs to the Opposer, Mr Lifshitz.