Hachette Filipacchi Presse is an international publishing house which amongst other activities, publishes the magazine ELLE which covers fashion, beauty, health and entertainment. Hachette Filipacchi Presse owns Israel Trademark No. 74356 for “ELLE” for all goods in class 25. The mark was registered in September 1994.
Mr Shimon Budkof who is a wholesale shoe distributor submitted an Application to have the ELLE mark Cancelled.
In addition to the cancellation proceeding, Hachette Filipacchi Presse is opposing a trademark application no 242680 filed by Mr Shimon Budkof for “יופי שנח לך ELLA” – literally “ELLA – Beauty that is Comfortable for You”. That opposition is partly based on the current mark and was combined with a further opposition filed by VF Inc. Intellectual Property Services for Ella Moss. In the circumstances, before considering the Oppositions, Ms Yaara Shoashani Caspi, Adjudicator of IP at the Israel Patent Office decided to consider the validity of the present mark first.
Section 41(a) allows third parties to file cancellation procedures against marks that were not filed in good faith or without a genuine intention to use them, or marks that have not been in use for at least three years.
In this instance, if Mr Shimon Budkof can show that the ELLE mark has not been in use between 21 January 2011 and 21 January 2014 when the cancellation proceedings was filed, the patent office could cancel the registration. However, in addition to the mark not being in use, the patent office has to consider whether there were special reasons for the mark not being in use. Even then, the cancellation is discretionary on the Commissioner.
The onus is on the third party challenging the mark to show that it has not been in use. This is difficult to prove but nevertheless a case must be made, and then the mark owner can attempt to show that there was in fact usage.
In this instance, Mr Shimon Budkof and two other shoe vendors, Eddy Shaharbani and Abraham Feiner, testified to never having come across shoes or garments sold in Israel under the brand ELLE. Eddy Shaharbani and Abraham Feiner are both long-term players in the Israel shoe industry. However they retailers that sell Mr Shimon Budkof’s shoes, which causes reliance on their statements to require caution. Furthermore, neither are familiar with shoe importing from abroad.
Mr Shimon Budkof claims to know Israel she importers, but he is a party to the cancellation procedure. There is no indication that Mr Shimon Budkof took pains to survey the industry and one cannot judge the objectivity of his conclusions.
A report from an independent private investigator that neutrally examined the extent of usage of ELLE as a mark for shoes would have been valuable but was not provided. In this instance, citing the Israel Trademark No. 207810 RICHEMONT INTERNATIONAL decision and citing Kedmi Rules of Evidence Section 3 page 1391, Ms Shoshani Caspi considers the failure to provide this type of evidence as undermining the case for cancellation.
In the circumstances, Ms Shoshani Caspi considers that Mr Shimon Budkof has failed to make a case that the Elle mark is not in use for shoes.
Hachette Filipacchi Presse submitted an affidavit from Mr Fabienne Sultan who claims that JB Martin is a shoe importer that is authorized to use the ELLE branding in Israel and submitted three separate invoices that indicate that shoes are being sold in Israel under the ELLE brand. Although the quantity of shoes indicated is not large, it is sufficient to show some usage and to prevent the mark being cancelled.
Some allegations that Sultan’s evidence was inadmissible were raised but these were not sufficiently substantiated and Budkof declined to cross-examine Hachette Filipacchi Presse’s witness.
I conclusion, the cancellation attempt is dismissed, and costs of 4000 NIS are awarded to Hachette Filipacchi Presse.
Elle is a magazine that was founded in 1945. With a circulation of over a million copies a month, it is the world’s most popular woman’s magazine. Although translated into some two dozen languages, there is no Hebrew edition. The word Elle means She. It has been the subject of a trademark dispute in the past See here.