Orchid Mark Not Defended by Rolex, and Apparently not in use in Israel, but partially maintained anyway

Rolex SA make watches. They obtained Israel trademark number 148809 for Orchid.  The mark covered a variety of chronology related goods but also bracelets, diamonds, earrings, chains, brooches, jewelry and other items.

Rolex Orchid

On 20 August 2015, Lily Diamonds fined to have the mark canceled for all goods other than watches, on the basis of lack of use. They claimed that the mark was never used in Israel and certainly not in the past three years.

Lily Diamonds filed the cancellation request as they intended to register Israel Application Number 259590 for “Orchidea” for cut and polished precious and semi-precious gemstones, watches encrusted with cut and polished precious and semi-precious gemstones and accessories for the above in class 14. Their application was refused based on the Examiner’s opinion that there was a likelihood of confusion with Rolex’s mark.

The cancellation request was sent to Rolex’ representative, but they did not file a counter-statement. On 13 December 2015 a hearing was set but since the cancellation request was unopposed, Lily Diamonds requested that the Commissioner rule on the material submitted.

The Ruling

Section 14 allows interested parties to request cancellation of marks that were not used or were filed without intent to use for the goods covered, or were not used within previous three years.

Although such marks may be cancelled, since trademarks are property rights, cancellation may occur only after careful consideration.

Although Rolex make and sell watches, some of the goods claimed are accessories for watches and a mark for a watch may provide protection for other goods in the same class.

Lily Diamonds submitted an affidavit from a private investigator who visited two Rolex stores and 10 precious watch stores and claimed that none of them sold or had heard of Rolex watches or anything else called Orchid. Nevertheless, since Rolex did not defend the mark, the Deputy Commisioner Ms Bracha who heard the case was suspicious that Lily Diamond was prepared to leave the mark for watches and only challenged it for other goods.

Using her discretion to do a bit of snooping as per Supreme Court Ruling 941/05  Agudat HaKormim vs. HaKerem LTD, the Deputy Commisioner Ms Bracha googled Rolex Orchid and discovered that there was such a line and they were still available on the second hand market. Since Rolex trades in second hand watches, this was considered adequate usage.

The classic Israel trademark treatise by Seligsohn which predates the sections of the ordiance that deal with well-known marks states that usage abroad may be sufficient to maintain a mark in Israel.

With reference to foreign trademark law, the ECJ only requires sufficient usage for the purpose of preserving or creating market share to prevent a third party cancelling a mark.

James Mellor, David Llewelyn, Thomas Moody-Stuart, David Keeling, Iona Berkeley in  “Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 352-353 3  also shows that “In essence, use of a mark on a website will only constitute use in a particular territory if the website is specifically aimed at and used by consumers in that territory.”

However,”McCarthy on Trademarks and Unfair Competition”

states that:

“While both aspects are relevant to the ultimate determination of whether an abandonment has taken place, where the firm claims that it had an intent to resume use and has some evidence to support, the primary emphasis should be on the degree to which will result in a likelihood of confusion. Consumers know nothing of the state of mind of the former trade-mark user, but they may well mistakenly think that a new use of that mark by another is a renewed use by the former user. While the state of mind of both the former user and the purchasing public are both important, in a close case, the state of mind of the public should prevail.

and that:

“Famous automobile marks of models no longer in production retain their recognition value and good will as a result of continuing public use of such relatively long-lasting products.”

Although Rolex did not defend the mark, where a mark has a reputation and the product has a long life, the reputation may still exist and the commissioner may be required to uphold the mark to prevent confusion. Furthermore, Lily Diamond did not file to cancel the mark completely, only to restrict it to watches.

In conclusion, the mark is canceled for bracelets and jewelry and the like, but remains in effect for: Anchors (clock and watch-making), atomic clocks, barrels (clock and watch-making), cases for clock and watch-making, cases for watches (presentation), chronographs (watches), clock cases, clockhands (clock and watch-making), clocks, clocks and watches electric, dials (clock and watch-making), movements for clocks and watches, pendulums (clock and watch-making), sundials, time clocks (master clocks), watch bands, watch cases, watch chains, watch glasses, watch springs, watches, wrist watches, all included in class 14.

Rolex will  pay Lily’s costs of 2500 Shekels and 2500 Shekels lawyer’s fees. The fees were estimated as no affidavit was filed by Lily’s lawyers.

Cancellation of 148809 for “ORCHID” to Rolex – ruling by Ms Jacqueline Bracha, 30 December 2015.

COMMENT

The ruling seems a fair compromise if a little timid.

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