Dalitex owns three trademarks for 361°. TM 192322 and TM 192323 are for bullet-proof vests and flak jackets in Class 9 and for packpacks, bags, cases and pouches in class 18.TM 192324 covers clothing and footware in class 25, specifcially choes, socks, coats, storm-suits, both fabric and synthetic, and hats.
Sanliuyidu (Fujian) Sports Goods Co., Ltd filed a request to cancel the marks due to lack of use. They themselves wish to register a slightly different mark in Israel, via the Madrid Protocol. Their mark is shown below.
The cancellation proceedings were initiated due to the Patent Office’s resistance to allowing Sanliuyidu (Fujian)’s mark.
Dalitex failed to respond to the cancellation action and Sanliuyidu (Fujian) filed their evidence and waived the need for a hearing.
Sanliuyidu (Fujian) submitted an Affidavit from Ding Huihuang, President of Sanliuyidu (Fujian), who claimed that they had been using their mark for 14 years and that it was registered in China, Korea, the US, Japan and the European Union. He further testiifed that Dalitex had not used their mark in Israel for over three years and that their website http://www.dalitex.com was innactive.
Sanliuyidu also filed an affidavit by a private investigator that he was engaged by Sanliuyidu to find articles carrying the Dalitex mark, and that he had found Dalitex’s address and spoke to the son of the share-holders who volunteered that the company had filed the marks with the intention of selling goods but had never actually used it. The Private Investigator further testified that he had visited various stores and also conducted an internet search, but failed to find any goods with Dalitex’ 360 logo on.
Section 41 allows third parties to bring cancellation proceedings if a mark has not been in use for 3 years or if ther is no intention to use the mark. The purpose is to keep the register free from placeholder marks.
Sanliuyidu have brought the cancellation proceeding as they wish to use the mark themselves. Since trademarks are property rights, the patent office will not cancel them without evidence, but in this instance, the private investigator had provided a prima facie case of non-use that the trademark owner had failed to challenge.
In the circumstances, Dalitex’ marks are cancelled and they are ordered to pay costs of 2000 Shekels and 2500 Shekels in legal fees to Sanliuyidu.
Cancellation of Israel Trademark Numbers 192322, 192323 and 192324 (361°) to Dalitex; Ruling by Ms Jacqueline Bracha,23 February 2016.