Israel Trademark Application Number is for the name JOSEPH. Joseph LTD filed the application for clothing; footwear; headgear; excluding jeans in class 25.
Castro Model LTD has Israel Registered Trademark No. 199244 for the wordmark Joseph for Clothing, pants, jeans, belts, jackets, shirts, t-shirts, pockets for clothing, overcoats, clothing of leather and imitation of leather; all included in class 25.
The Examiner cited this registration against the Application under section 11(9). In response, the Applicant produced a letter from Castro to the effect that they had no problem with coexistence so long as the registration specfically excluded jeans.
As to the likelihood of confusion, Joseph LTD sell designer clothing at
rediculously very high prices in boutique stores in Tel Aviv’s swanky Kikar Medina and in Factory 54, whereas Castro is a high street brand. They argued that the targeted demographic is very different.
Furthermore, Castro only sells their own lines in their stores and Castro clothing are no available elsewhere.
The name Joseph comes from the name of the founder, Mr Joseph Etdaji, and is in use since 1989 and is registered in many countries. Applicants are aware that the name Joseph is in common usage and have no objection to others using the name in good faith.
They consider that parrallel registration should be allowed as per Section 30.
After a hearing, the Commissioner felt that there is no likelihood of confusion with Castro who agreed to coexistence, and since the mark was already registered by Castro, its registration to Joseph LTD would not unduly affect third parties using the name in good faith, so allowed the mark to be registered.
Joseph Kaufman is a well known brand. So is Castro, but as Castro only sells their own lines in their stores and Castro clothing are no available elsewhere, I think the Commissioner is correct to allow coexistence.
However, I hope that patents writing his name on the labels of Joseph’s clothes are not considered as infringing. I also think that Coats of Many Colours should be excluded from the list of goods…
I feel in an ecumenical and tolerant mood today, so have provided pictures for Jews, Christians and Communist Atheists to colour in.