Mr David Ivgy applied for Israel Trademark No. 256843 for PJ as shown below:
Lifestyle Equities CV opposed the mark as confusingly similar to their logo as shown below:
Mr David Ivgy requested that Lifestyle Equities CV post a bond to cover real and punitive costs should they be awarded.
The background to the cost request was the similarity between Mr David Ivgy’s mark and Lifestyle Equities CV mark for Beverly Hills Polo Club. Which also features a polo rider on a horse, albeit galloping in the opposite direction.
Mr David Ivgy that Lifestyle Equities CV is a foreign entity without Israeli collateral and that it would be difficult to collect from them, should the opposition be dismissed. He further argued that the chances of Lifestyle Equities CV prevailing were remote and that there was a real legal basis for requesting that a bond be posted.
Lifestyle Equities CV responded, albeit without a signed affidavit, arguing that Ivgy’s request be rejected. They argued that the Commissioner had wide discretion regarding the posting of a bond to cover costs and that Ivgy had not made a case that they would have difficulty making payments if their opposition was refused. That Lifestyle Equities CV was domiciled abroad was not in and of itself justification for requesting a bond, and since they owned the profitable Beverly Hills Polo Club brand, which was known internationally, they had financial means. Lifestyle Equities CV further claimed to have assets in Israel since they licensed the Beverly Hills Polo Club and reaped large licensing fees. Furthermore, the statement of case showed a good chance of them winning their opposition, and that requiring payment of a bond was against their fundamental rights to own property and to access the court system.
In response, Ivgy claimed that the lack of an affidavit undermined Lifestyle Equities CV claims of assets and liquidity and the burden of proof was on them. Furthermore, if Lifestyle Equities CV indeed had assets they could not claim to be prevented access to the court system by being required to post a bond. He further argued that the marks were dissimilar and the chances of Lifestyle Equities CV prevailing were remote.
Both sides agree that the Registrar of Trademarks has the discretion to request posting of a bond where there is likelihood of an opposer defaulting on costs.
A consideration is whether the opposer is a foreign entity but the Hague Treaty of 1954 which prevents discrimination against foreign companies prevents this being automatically applied. Lifestyle Equities CV is a Dutch company and Holland is a signatory of the Hague Treaty of 1954.
The appropriate considerations are given in Section 353a of the Company Law and this prevents requiring a bond to be deposited in cases where the Company proves it has assets in Israel or where the court believes that collecting will not be a problem.
Generally the case law required foreign companies to post a bond but recently there has been a move against this trend. The issue is primarily one of financial ability but the court also has to consider additional issues.
in this instance, Section 353a would indicate that a foreign limited company should post a bond, but the courts have discretion in this matter. Ivgy is correct that Lifestyle Equities CV declined to show a balance sheet or the like to demonstrate its liquidity. However, in this case, the Opposer does business in Israel.
The likelihood of prevailing or otherwise is beyond the considerations when deciding whether a bond should be deposited. Despite the wealth of evidence that similar oppositions were unsuccessful abroad, there is a certain similarity between Lifestyle Equities CV’s mark and the pending application and the claim that this could confuse customers is not a ridiculous one.
In summary, Ms Yaara Shoshani Caspi did not think that there was a reasonable likelihood of Lifestyle Equities CV defaulting on paying any costs against them and was suspicious of Ivgy’s claimed doubts on the matter. In this instance, the bond was refused and costs of 1500 Shekels were awarded to Lifestyle Equities CV.
Ruling by Ms Yaara Shoshani-Caspi re bond in Opposition to Israel Trademark Application No. 256843, 21 December 2015