A Cut Throat Dispute

sweeney todd

Razer (Asia Pacific) PTE LTD filed Israel Trademark Application Number 242735 as shown below:

RAZER

The mark as currently registered relates to Computers; laptop computers; notebook computers; handheld computers; personal digital assistants; computer and video game apparatus adapted for use with television receivers or other external display screens or monitors; computer displays; computer monitors; computer hardware; computer sound cards; computer peripherals; computer and video game controllers; computer mice; computer keyboards; computer keypads; computer graphics tablets; computer pens; computer joysticks; computer trackballs; flight yokes for computer and video games; steering wheels for computer and video games; accelerator pedals and brake pedals for computer and video games; guns for computer and video games; motion sensors for computer and video games; audio equipment and apparatus; earphones; headphones; microphones; headsets; loudspeakers; apparatus for cable management for the aforementioned goods; computer and video games; computer mice mats; bags, pouches, cases and covers adapted for holding and storing the aforementioned goods; for gaming use and/or gamers and excluding, phablets and television in class 9; to Bags; messenger bags; travel bags; backpacks; knapsacks; for gaming use and/or gamers in class 18, to Clothing; polo shirts; T-shirts; hoodies; headgear; caps; sweatbands; for gaming use and/or gamers in class 25 and to Video game apparatus other than those adapted for use with television receivers; handheld video game apparatus other than those adapted for use with television receivers; parts and spare parts of the aforementioned goods as far as included in this class; bags, pouches, cases and covers adapted for holding and storing the aforementioned goods in class 28.

Not long afterwards, Razor USA LLC filed Israel Trademark Application Number 242450 for RZER covering Computers, tablet computers, and related accessories, namely, computer docking stations, mounts, stands holders and cradles for holding and charging computers, carrying cases for computers, protective covers for computers, protective or decorative skins, screen protectors, namely, fitted or plastic films known as skins for covering and protecting computers, input and navigation devices, namely, keyboards, mouse, track balls, and stylus for use with computers, computer memory, namely hard drives, portable and removable memory for use with computers, networking equipment, namely modems, routers and gateways for use with computers, batteries, power adaptors, computer cables, cable connectors, remote controls, headsets, speakers, sound systems for use with computers, and microphones and web cameras for use with computers and computer software; telephones; corded and cordless telephones for wireline service (PTT (post, telegraph and telephone) POTS or PSTN service); mobile phones, smartphones, and accessories therefore, namely battery chargers and power adaptors; all included in class 9.

Since both marks are similar and each cover computer related goods in class 9, following the parties failing to reach any agreement, a competing marks procedure was initiated.  On 26 January 2015 the parties were cross-examined and a date was fixed for submission of summaries from the two parties.

After several joint requests for extensions, the parties jointly asked to be relieved of having to file summaries and announced having reached an agreement in the various jurisdictions where similar competing marks procedures were taking place, however there was still a disagreement regarding implementing the decision in Israel and further extensions were requested.

On 12 October 2015 Razer Asia Pacific PTE LTD informed the Israel Patent and Trademark Office that a coexistence agreement had been reached and requested amendments to Application number 242735 to bring an end to the competing marks procedure.

Israel Application Number 242735 is a national phase of an International Application and the list of goods is in English only.  The requested amendments included limiting class 9 goods to “for gaming use or gamers”. In class 18, sport bags would be deleted and the remaining goods would also be limited to “for gaming use or gamers”. In class 25, the term sweaters would be deleted and the remaining goods would also be limited to”for gaming use or gamers”, and in class 28, reference to “games and playthings; electronic games and playthings other than those adapted for use with television receivers” would be deleted.

RULING
Section 22a(a)(2) of the regulations (1940) allow the Commissioner to authorize amendments to the lists of goods so long as they are by nature of clarifications or narrow the scope of goods, and so long that they are in no way widening.

There is a prima facie case that the amendments are all narrowing the scope of the mark. The Competitor, Razor LLC USA accepts the changes, apart from that to Class 9 where Razor LLLC USA wants the following amendment: “for gaming use and/or gamers and excluding, phablets and television“, and argues that this further differentiates between the goods that the two companies sell under the marks and minimizes still further, the likelihood of confusion. Consequently, both marks would then be acceptable for registration under Section 30 and this amendment better reflects that agreed between the parties.

Razer accepts the Israel Patent Office’s authority to decide on the appropriate limitation but disagrees that the narrower interpretation was agreed.

Neither party provided the Commissioner with a copy of the agreement. Razer even argued that it was secret as were the negotiations leading up to the agreement. Since he did not have access to it, the Commissioner could not interpret the agreement. Consequently this ruling is limited to the Commissioner’s authority to allow coexistence and parallel use.

Section 30 authorizes the Commissioner to allow parallel registration in cases where they were applied for in good faith and where the Commissioner sees fit.

Since the parties agree with coexistence in 4 classes, and only disagree about a selection of the goods in class 9, there is no evidence of inequitable behaviour or a will to deceive.

Although, Section 30 does not include the term to mislead, the case-law, such as Appeal 8778/04 Yotvata vs. Tenuva, 30 April 2007 page 30 makes clear that only amendments that are not likely to mislead the public regarding the source of goods may be registered.

The two marks in question are word marks for Razer and Rzer and whilst not identical, do look and sound similar. Coexistence has been deemed allowable in cases where there is a difference in the protected goods or in the customers for a product. For example, in  a 2001 decision concerning TM 206317, TM 207981 and 108389, Naaleh Itzik and Nimrod Manufacturing LTD 1979 could both register the brand Sahara since the Commissioner was persuaded that there was no likelihood of confusion between shoe and sandals. Where marks are similar but not identical, such as in the TM No. 174521 “Cosabella”, 178831 “Cocabella” case, it is even easier for the Commissioner to allow two marks to coexist in the same class.

In this instance, the Commissioner has enough evidence regarding the goods and usage of the mark to decide whether or not to allow coexistence and the appropriate descriptions of the goods, and such a ruling is final as per Section 10c of the Ordinance.

Razer (Asia Pacific) PTE LTD does not see it necessary to explicitly exclude phablets and television which anyway weren’t listed in the goods description for Trademark application no. 242735 Class 9.

The full list of goods available under Section 9 includes computer and video game apparatus adapted for use with television receivers or other external display screens or monitors; …. computer graphics tablets;….

The term phablet is some sort of mobile phone / tablet device. The Commissioner gave the parties the opportunity to explain why the additional disclaimer was or wasn’t required.   Razer (Asia Pacific) PTE LTD relied on the fact that TVs and computer graphic tablets weren’t listed. However, in the Afidavit of Mr Kornbrot that was submitted by them, the term tablet did appear and by considered as included in the term “other external display screens or monitors”. Furthermore, in the corresponding Argentinian, Canadian and Indian registrations, the terms Handheld computers, Personal Digital Assistants and Television sets were included.  Consequently, in this instance, the commissioner did not consider these goods as implicitly disclaimed, but would allow both marks to be registered if the mututally agreed disclaimers  and the disclaimer in  class 9 specifying “for gaming use and/or gamers and excluding, phablets and television “.

Ruling by Asa Kling Concerning IL TM 242735 “Razer” and IL TM 242450 “Razr”, allowing coexistence with appropriate restriction of goods covered. 11 January 2016.

COMMENT

The marks are very similar. The companies reaching a coexistence agreement is not necessary sufficient for the Patent Office to conclude that there is no likelihood of confusion.  However, it is not clear to me what the companies actually sell. I therefore cannot comment on whether it is likely that customers might be confused into thinking that products of one company originated with the other.

 

 

 

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