Competing Princes Can’t Co-exist

Princes

Shalom Inesaze (Prince 2000) filed Israel Trademark No. 150126 for “Prince 2000” for men and women’s clothing in class 25.

Segal Bros. Opto line LTD filed Israel Trademark No. 128511 for “Prince” for goods included in class 25; excluding clothing, footwear, headgear, which are designed only for racquet sports or golf.

A competing marks proceeding was instituted under Section 29 of the Israel Trademark Ordinance. The parties submitted their statements and counter-statements and evidence and a hearing was held. They were supposed to submit their written summations. Instead, they requested coexistence under Section 30 of the Ordinance. This would enable both parties to register their marks and continue using them, which could be important if they had invested resources into promoting the mark and had developed a reputation.

The problem is that there is also a public interest to protect. It is important that the public are not misled into believing that products from one company originate with the other, or that the companies are one and the same. The dominant element in both marks is the word PRINCE. Both marks are for goods in the same class.

To avoid confusion, the parties agreed that Segal Bros. Opto line LTD would use the term prince with a crown above the word as they do in practice.  Shalom Inesaze undertook to only use the word PRINCE in conjunction with 2000 or 2000 line and would ensure that the font was different from that used by Segal Bros. Opto line LTD. However, the Israel Patent and Trademark Office do not consider that these limitations would affect the registerability of two such similar marks. The Israel Patent and Trademark Office is also not prepared to give a legal rubber-stamp to an agreement giving one party rights to the word PRINCE with a graphic crown element when an application for such a mark was not even filed.

The problem with allowing the marks as filed, is that they are not even the marks that have, to date, been in use and developed a reputation. The agreement is forward-looking and the parties might or might not keep it.

The main problem, however, is public interest, which the Israel Patent and Trademark Office did not think was served by allowing coexistence in this instance.

The request for coexistence was refused. The parties have two months to provide their summaries and no extensions will be given.

 

 

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