in a side skirmish, H.A.B. Trading LTD filed a request to throw out Yidiot Internet’s cancellation action against their trademark no. 131862 for Big Deal. Yidiot Internet filed a response to this and added evidence from the main case.
The request to cancel the case was based on Sections 8(a) and 11(10) of the Ordinance and the argument that Big Deal is a generic term which should not be monopolized, preventing the public from using the term. Yidiot Internet further argued that the filing of the generic term without even a graphical rendering thereof was inequitable behaviour on the part of the applicants, designed to prevent fair use of the term ‘big deal’ by others. They proposed a disclaimer from rights in the combination of words.
The mark owner, H.A.B. Trading LTD noted that they had registered the mark in September 2003 and the cancellation request was only filed in July 2014 which is more than five years after it was filed as provided for in Section 39a of the Ordinance, and that the challenger was therefore prevented from raising such arguments that the mark should not have been registered and was invalid, justifying that the request be thrown out and a basis for allegations that the request to cancel the mark was filed in bad faith.
The burden of proof for cancelling a mark lies with the challenger who files the cancellation request. See Bagatz 144/85 Klil Non-Ferrous Metals vs. Commissioner of Patents 44(1) 30, page 318. Section 64 of the Ordinance determines that the registration of a mark is a prima facie indication of its validity. The burden of proof will, however, oscillate from side to side throughout the proceeding as each party brings evidence to support its case.
Section 39 relates to grounds for cancellation under Sections 38 and disallows arguments of registerability found in Sections 7 to 11 if more than five years has passed since the mark was registered. However, Section 39(a) states categorically that arguments of inequitable behaviour when filing the mark may be raised as grounds for cancellation of the mark at any time. Thus the issue is the alleged inequitable behaviour and whether this is persuasive.
The Opposer sees the registration of a generic term and failure to pay the renewal in a timely manner as evidence of inequitable behaviour. The Adjudicator of Intellectual Property Ms Yaara Shoshani Caspi rejected the late payment argument as sufficient to cancel the mark on equitable behaviour grounds. However, she felt it reasonable to consider if even at the time of filing the term Big Deal was a generic distinctive mark among traders such that its filing was inequitable behaviour. The authority and obligation of the Registrar of Trademarks is to protect the public interest inherent in a clean trademark registry over and beyond the business interests of the parties in a contentious proceedings.
Inequitable behaviour is something objective that has to be proven with solid evidence and not merely alleged.See for example, section 7 of the ruling from March 2009 concerning Tobishi Trading vs. Herman International Industries which related to Israel Trademark No. 175594 which stated that the Challenger to a mark on basis of inequitable behaviour at the time of filing has to provide evidence of alleged inequitable behaviour.
Since Section 21a discusses disclaiming monopolistic rights to words and phrases, and since Section 39a relates to Sections 7 to 11 but not to Section 21 as having a five year limit for raising such issues, this issue of generic nature of the mark can fairly be raised as grounds for cancelling a mark even after 5 years has passed.
Following the above analysis, it is better to allow the cancellation proceedings to proceed and to deal with the validity of the mark on its merits rather than to throw out the cancellation proceedings. Costs of 1000 Shekels excluding VAT were awarded against the mark holder.
Interim Decision by Adjudicator Ms Yaara Shoshani Caspi re validity of Israel trademark no. 131862 for Big Deal, 14 December 2015.
Quite apart from whether the mark should have registered, a mark can become generic at any time – think elevator, escalator, aspirin, thermos, so the mere fact of registration cannot be used to prevent a discussion of the invalidity of a mark on generic grounds.