Siniora Food Industries and Mr Yosef Yaakov Siniora (Probably better Yusuf Yakub Siniora) each filed trademarks that included the name Siniora.
Siniora Food Industries filed Israel trademark application numbers 263749 and 263752 in class 29 for meat, fish, poultry, meat extracts, poultry products and sausages.
Israel trademark application number 263749 looks like this:
and Israel trademark application number 263752 looks like this:
Mr Yusuf Yakub Siniora filed Israel trademark application number 255787 in class 29 for meat, fish, poultry and meat extracts. The mark looks like this:
Apparently this is pronounced Abnaa Sinora.
Due to the confusing similarity of the marks, at least to those that can read Arabic which is an official language in Israel, a competing marks procedure was initiated. Where the parties agree and the Israel Trademark Office considers that there is no likelihood of confusion of the public, sometimes both marks are allowed to coexist. Generally, however, under this procedure, the first to file is a consideration, but the scale of use and pack of equitable behavior is more significant. Once the party having the best case is determined, that mark goes on to examination whilst examination of the competing mark is stayed.
In this instance, Siniora Food Industries produced their CFO as an expert witness regarding usage of the mark. Mr Yusuf Yakub Siniora did not show actual usage of the mark in trade however he did produce formal documents such as his identity card, receipts and tax returns to show that his family name was Abnaa Sinoria. Consequently Siniora Food Industries forgo the right of cross-examination. Their CFO was, however, cross-examined.
In their summary, Siniora Food Industries alleged that Mr Yusuf Yakub Siniora had failed to establish commercial use of his name as a trademark since he had not shown his turnover, marketing attempts, packaging or photographs or other evidence of the packaging displaying his mark. No evidence was submitted to show that the mark was registered abroad. Siniora Food Industries argued that the failure to show any use by Mr Yusuf Yakub Siniora should act against him.
Siniora Food Industries considered that they had proven usage of their marks, both in Israel and worldwide. Indeed, the mark had usage from 1920 onwards. Their mark was registered in many Arab countries. They alleged that Mr Yusuf Yakub Siniora had chosen the mark in bad faith with intent to leverage their reputation. This conclusion was reached since he had neither shown usage nor justified the choice of the mark. Although Siniora Food Industries was the second to file, this was practically irrelevant since this is given little weight in competing marks proceedings.
Mr Yusuf Yakub Siniora’s attorney claimed that his client had opened a business in good faith with no knowledge of Siniora Food Industries, their products or their marks. The chosen mark, Abnaa Sinora, was his family name, and, since this was a graphic mark by virtue of it being written in an arc, there was no problem with registering it in Israel. Mr Yusuf Yakub Siniora claimed to sell produce in Israel under the mark and was surprised to learn about Siniora Food Industries.
He further noted that the graphical representation of Siniora Food Industries was sufficiently different that there was no likelihood of confusion and the intended customers were different.
Furthermore, Mr Yusuf Yakub Siniora’s attorney noted that the Ministry of Health had prohibited Siniora Food Industries from selling their produce in Israel and therefore their mark should not be allowed either.
Although Siniora Food Industries had demonstrated use in Arab countries, including the areas under Palestinian Authority, the mark was not demonstrated as in use in the territories of the State of Israel. He further claimed that Siniora Food Industries had not shown legal rights in the mark and in 2009 the mark 67715 was filed in the name of Sirkat Siniora and Waladah and was canceled due to lack of payment of the renewal which demonstrated a lack of interest by Siniora Food Industries to use the mark in Israel. The so called publicity in Israel was on vehicles that traveled in East Jerusalem and thus could not serve as use in Israel. The publicity was post 2013 and thus was an attempt by Siniora Food Industries to benefit from Mr Yusuf Yakub Siniora’s reputation! Finally various claims against the registerability of trademark application 2634749 were submitted.
Competing marks proceedings are apply to apparently confusingly similar marks and the applicable law is section 29 of the Trademark Ordinance.
The Registrar of Trademarks is obliged to determine whose rights take precedent. There are three considerations:
⦁ First to file
⦁ Scope of usage
⦁ Equitable behavior
Mr Yusuf Yakub Siniora’s allegation that 2634749 was not confusingly similar to his mark is rejected since the Arabic word Siniora is common to both and creates a prima facie likelihood of confusion (to Arabic readers -MF). That said, there may be room for coexistence of 255787 and 263752 since the likelihood of confusion between two graphic marks was less. However, since the issue in question is whose rights to the word Siniora takes precedent, it is correct and right to relate to apply the competing marks procedure to this mark.
Siniora Food Industries filed a thick wad of evidence showing usage of the mark which the Ministry of Justice translated from Arabic into Hebrew at their expense. This showed usage. Although Mr Yusuf Yakub Siniora challenged the evidence, he had not fulfilled the burden of proof required to nullify the evidence submitted.
Siniora Food Industries sells meat, poultry and fish under the brand Siniora, sometimes including the words Al Kuds (Jerusalem in Arabic) and / or the logo of application number 232752. The marks were profitable and were registered in many countries including Egypt, Jordan, Lebanon, Saudi Arabia and Yemen. The marks were publicized around the world and were used on their sales fleet and on their Facebook and Linked In pages. This an newspaper cuttings from newspapers in Arab countries created a prima facie case of usage that Mr Yusuf Yakub Siniora had failed to nullify.
Siniora Food Industries had a factory in El-Azareeya (by Pisgat Zeev – Maale Adumim – MF) and sold their goods in East Jerusalem, the West Bank and Gaza. Although most of the produce was sold in the West Bank (Judea and Samaria) and Gaza, the evidence submitted showed tones of produce sold in East Jerusalem. Both fixed signs in East Jerusalem and distribution vehicles there by Israeli license plates showed usage.
Mr Yusuf Yakub Siniora did not show lack of usage by Siniora Food Industries in Israel since the evidence submitted was not successfully overcome. The Israel Patent Office recognizes East Jerusalem as Sovereign Israel.
The fact that the 67715 mark was abandoned in 2009 is insufficient to show lack of interest in the mark by Siniora Food Industries who clearly were using the Siniora branding after 2009 and were not demonstrated as related to the owner of the 67715 mark.
Mr Yusuf Yakub Siniora failed to show usage of the mark and had failed to submit an affidavit as required by Section 15 of the regulations of evidence 1971. He was given a further opportunity to do so, beyond the strict letter of the law and requested and was granted a further extension but still failed to submit an affidavit.
The little evidence submitted does not indicate the nature of the business Mr Yusuf Yakub Siniora opened and the products sold. He merely established that Siniora was part of his name and this was insufficient for Section 29 Competing Marks Proceedings which requires a wider usage that was not shown.
The choice of mark and its usage after selection are separate though related issues. The burden of proof to establish Inequitable Behavior is high. The Adjudicator, Ms Shoshani-Caspi did not consider that this burden was met by either party.
Mr Yusuf Yakub Siniora filed his application 10 months previous to Siniora Food Industries but in view of their greater usage, was not given much weight.
In conclusion, Siniora Food Industries’ marks take precedence. However, Mr Yusuf Yakub Siniora is still able to use his name in good faith as per Section 47 of the Trademark Ordinance which provides for usage of a person’s actual name by the person or his inheritors providing the usage is in good faith. Mr Yusuf Yakub Siniora’s request to register the name as a trademark however, requires showing that it is indeed used as a trademark. Possibly the two parties could have avoided the competing marks proceedings, but didn’t. Some names are not inherently distinctive but this is not the case here. Arguments regarding the Ministry of Health banning Siniora Food Industries’ products are beyond the jurisdiction of the Patent and Trademark Office and Mr Yusuf Yakub Siniora can take up the issue with the relevant authorities.
Siniora Food Industries Israel trademark application numbers 263749 and 263752 may proceed to examination and Mr Yusuf Yakub Siniora’s Israel trademark application number 255787 is closed. Furthermore, costs of 6000 Shekels are awarded against Mr Yusuf Yakub Siniora and in favour of Siniora Food Industries.
Ruling: Ms Yaara Shoshani Caspi, 30 December 2015.
Mr Yusuf Yakub Siniora’s lawyer seems to have annoyed Ms Yaara Shoshani Caspi, both by claiming that East Jerusalem is not part of Israel despite Israel annexing it by Law, and by not providing an affidavit when given every opportunity to do so. It is not clear if Mr Yusuf Yakub Siniora has a small business selling meat, poultry and vegetables or if he was attempting to squat on the trademark. With the evidence at her disposal, the decision seems to be the correct one.