Co-op Israel Supermarket Reshet Ltd. filed Israel Trademark Number 244529 for Stores, supermarkets, management and operation of stores and supermarkets,advertising; all included in class 35. The mark was filed in February 2012.
Back on 19 May 2013, the Examiner decided that the mark could not be registered due to Section 11(9) objections.
ON 8 August 2013, the Applicant responded that the prefix Coop was an established abbreviation of Cooperation and that the term Coopshop was descriptive. Since the mark was stylized it should be examined in its entirety and there was no likelihood of confusion between the requested mark and those registered.
On 29 October 2013, the Patent and Trademark Office upheld their objection arguing that the mark was identical sounding and visually similar to 83846 and 98967 reproduced below.
(Co-op in Hebrew).
and (Super-Co-op in Hebrew).
which were both registered for retail stores and services in class 35.
Due to the similarity of the marks and of the services covered, the trademark office was not prepared to allow coexistence, and in response to the Applicant’s claim that the marks were not in use, the Examiner suggested that Applicant file cancellation proceedings.
The Applicant claimed that the marks were not in use for over a decade, denied that they were confusingly similar and requested coexistence under Section 30(a) of the Law.
On 6 November 2014, the Trademark Department reiterated that coexistence was not possible due to similarities risking confusing the public and that if the registered marks were indeed no longer in use, the Applicant could initiate cancellation proceedings.
The applicant requested an oral hearing.
At the start of the hearing, the Deputy Commissioner Ms Bracha ruled that a copending mark 244530 as shown below, could be registered since she did not think it would be confusing to the public.
The question is whether the proposed mark is confusingly similar to those previously registered.
(Co-op in Hebrew).
and (Super-Co-op in Hebrew).
The Deputy Commissioner applied the well known (5 point) triple test:
- Appearance of mark
- Sound of mark
- Type of goods
- Distribution channels
- Everything else.
Most weight was given to the sight and sound of the mark. The marks are considered in their entirety as perceived by the consumer, but weight is given to the prominent and dominating features thereof. See Seligsohn, 1973.
Audibly, the marks include the element coop, but this is only part of the sound, and the comsumer does not think of the elements, but of the totality.
When considering the appearance, one cannot ignore the graphic styling and the suffix ‘shop’. The mark is two tone, with ‘Coop’ in a darker blue than ‘shop’, with the holam (vowel dot) in red. The TM 83846 mark is a row of five squares, with the word Coop in a different shade of blue in the middle three and in white on the outer squares. The TM 83846 mark is a dark blue rectangle with the words ‘Super Coop’ written in white thereon.
There appears to be a slight difference in font between those of the registered marks and the pending mark, but this is only noticeable when comparing them side by side. The TM 83846 mark is a similar shade of blue and the fonts are similar, though not identical.
As the words comprise descriptive elements, and the woed ‘shop’ is descriptive to the point of being generic, the consumer will focus on the distinctive element of the marks, which the Examiner considers to be the colour scheme, and supports this from paragraph 21 of the Tim Tam ruling.
Citing “Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 313
“The public will not generally consider a descriptive element forming part of a complex (or composite) mark as the dominant element of the overall impression created by the mark; it is the dominant elements of the marks that are critical in the overall evaluation, although it is only if all the other components are negligible that the assessment can be carried out solely on the basis of the dominant elements.”
The applicant claims that the word Coop stands for cooperation and is thus also descriptive. The marks have to be considered in their entirety as logos. The Applicants’ assertion that the word coop should be ignored when comparing the marks is unreasonable. See 1677/05 Deutsche Telekom vs. E” Entertianment television, where T-Online and E! Online were considered confusingly similar due to the common dominant if generic-descriptive word, but the word E! was considered distinctive in the local market.
As to the rest of the mark, citing J. Thomas McCarthy McCarthy בספרו on Trademarks and Unfair Competition (2008) on pages 23-202:
“The Federal Circuit holds that a descriptive or generic portion of a composite mark is to be given less weight on the rationale that the public will look to other portions of the marks and will not be confused unless the other portions are similar. In this case, the other portions were similar and likely confusion was found.”
This the similarity or difference of the first part of the word has to be considered from the consumer’s perspective.
Ms Bracha considered that the marks looked and sounded similar.
Both companies were general grocery retailers and so the customer group was the same. The Applicant argued that each store was in a different location, but the Deputy Commissioner was not prepared to give this distinction much weight.
As to other considerations, the Applicant argued that there was no likelihood of confusion as the registered marks were not in use. The Deputy Commissioner ruled that marks were an asset and could have economic value and again cited Kerly (page 12) which referred to a European Court Ruling:
“In addition to its function of indicating origin and, as the case may be, its advertising function, a trade mark may also be used by its proprietor to acquire or preserve reputation capable of attracting consumers and retaining their loyalty.”
The Deputy Commissioner noted that marks could be transferred, used as liens and traded, and thus had value so was not prepared to empty the marks of value by allowing similar marks merely because they were not actively being used, and again noted that the Applicant could actively seek the marks cancellation on the basis of non-use. Furthermore, the TM 83846 mark was renewed as recently as 27 June 2013 implying that its owner saw value in it, had not abandoned it and might start using the mark or sell/lease it to a third party.
In conclusion, Ms Bracha could not accept TM Application Number 244529 in light of the 83846 and 98697 registrations. As Applicant claims that the registered marks have not been in use for over three years he is given a three month window to file a cancellation proceedings and if he chooses to do so, the Examination of this mark will be suspended pending the results of that hearing. Otherwise, this mark will be cancelled.
Ruling Re Registerability of Israel Trademark No. 244529 for Coopshop, Ms J Bracha, 31 January 2016.
I would have assumed that the term Coop was short for cooperative and not cooperation. However, the Applicant is being represented by a UK born and educated lawyer so I could be wrong (though suspect he is).
That as may be, I am very surprised that the Deputy Commissioner refused the mark whilst allowing a similar mark with the addition of a stylized shopping cart as sufficient to render the mixed stylized word and logo mark distinctive. I consider a shopping trolley or cart is about as generic as things can get for supermarkets. The additional wording “Our Supermarket” in a smaller font is hardly redeeming.
I note that the Coop, Blue Square etc. was bought out by the Mega supermarket chain who are currently under receivership. It could be that this while ruling is just a little premature. Indeed, as I think the mark is very week, I’d have advised the Applicant to buy up the established marks and the associated rights.