On 4 Speptember 2012 Anna Lotan LTD filed Israel Trademark Application No. 249607 for PETA as shown above. The mark covers cosmetics- face and body creams, lotions, face and body cleaning preparations, soaps, gels, masks – all included in class 3.
The application was allowed and published for opposition purposes on 31 December 2013. On 30 March 2014, a Opposition proceedings was initiated by People for the Ethical Treatment of Animals, Inc. “PETA”.
The parties submitted their statements and evidence, forgo a hearing and croess-examination and submitted written summaries.
PETA is a non-profit organization founded in the United States that protects animal rights. PETA educates about lifestyles that do not take advantage of animals and monitor experiments on Animals. The Foundation to Support Animal Protection “FSAP” is a US Company that provides services to PETA and files PETA’s trademarks around the world, one of which is very similar to the Application in question, but PETA’s mark also includes the full name of PETA. This mark is shown below:
PETA has had a tremendous amount of press coverage worldwide including a certain amount of press coverage in Israel [mostly due to the provocative use of naked women – MF]. Their marks are well known in the United States.
The Applicant, Anne Lotan, m nufactures and sells cosmetics. Apart from submitting some packaging showing the applied for mark, Anne Lotan did not supply details of their business.
PETA allows commercial companies to use its marks on products that are not tested on animals. Both sides concur that prior to filing their own application, Anne Lotan tried to obtain a license to use PETA’s marks and both sides concur that at the time of filing Anne Lotan did not have a license.
PETA claims that the mark is theirs and that Anne Lotan filed in bad faith to register a license that she was not authorized to use.
Anne Lotan claimed that they attempted to register the marks on failing to obtain authorization from PETA to use them, and after some of their products were inadvertently marked with the applied for logo.
The parties addressed the issue of registerability of the mark under Section 11(f) of the Trademark Ordinance 1972. The Applicant does not deny that PETA have rights to the mark, but claim that their usage thereof was unintentional and not indicative of lack of faith on their part.
In the circumstances, the Deputy Commissioner considers that this Opposition can be dealt with briefly.
Section 17(a) of the Regulation states that an Application may be filed by an entity claiming ownership of the mark. In this instance, the Applicant does not claim rights to the mark and does not have rights. The purpose of their attempted registration is to prevent the legitimate rights owner from registering the trademark and preventing Applicant’s usage thereof by selling packages with the mark thereon.
The Applicant filed the application after the Opposer requested that they stop selling such packages and after the Applicant agreed to take down the mark from their website. The Applicant claims that their attempted registration was legitimate in light of Section 7 which instructs that someone desiring sole rights to mark may file a trademark application for it.
The Deputy Commissioner failed to full follow the Applicant’s arguments but notes that the Applicant wasn’t even claiming sole rights. Anne Lotan is not the owner of the mark and cannot be registered as such in the Register. The exact relationship between PETA and FSAP is not clear. However, as Anne Lotan does not challenge PETA’s rights to the mark, this relationship is not essential as far as this ruling is concerned.
The mark cannot be registered by Anne Lotan under Section 11(e) or 11(f), despite Opposer not specifically addressing this issue, since both parties agree that Anne Lotan does not have any rights in this. The logo is not theirs. One cannot register someone elses copyright protected artwork as a trademark without authority to do so. In this instance, the stylized rabbit and the font are copyright protected property of PETA and thus cannot be registered under Section 11(e).
Section 11(f) prevents registration of a mark that could confuse the public and create unfair competition. Anne Lotan claims that there is no inequitable behaviour in that they do not compete with PETA and thus registration of the mark does not contravene Section 11(f).
The Deputy Commissioner does not consider that the two entities are competitors but rather that by Anne Lotan’s using the mark, the public would be mislead into wrongfully thinking that Anne Lotan’s goods had been inspected and approved by PETA as not having been tested on animals.
Allowing registration of the mark by Anne Lotan would create the false impression the PETA had authorized that the products were not tested on animals. There is also dilution in this instance.
PETA trades in the mark by allowing its usage on products authorized by PETA as not having been tested on animals. Anne Lotan does not deny this. Allowing Anne Lotan to register the mark would dilute PETA’s mark. Regardless of how Anne Lotan sees their behaviour, objectively their behaviour is one of bad faith.
The mark may not be registered by Anne Lotan who must pay 5000 Shekels expenses and 30,000 Shekels + VAT legal costs to PETA, the costs being determined by the amount of evidence submitted.
Categories: bad faith, competing marks, Fair Use, inequitable behaviour, Israel Patent Office Rulings, Israel Trademark, opposition, oppostion, trademark, trademarks, החלטת רשות הפטנטים, התנגדות, מחלקת סימני מסחר, סימן מסחר, סמני מסחר, קניין רוחני, קנין רוחני