The Krasnyi Octybar Joint Stock Company and the Rot Front Open Type Joint Stock Company have filed a Trademark Application No. 267652 as follows:
The mark covers almond confectionery; boiled confectionery; cachou [confectionery], other than for pharmaceutical purposes; chocolate confectionery; chocolate confectionery containing pralines; chocolate confectionery having a praline favour; chocolate confectionery products; chocolate decorations for confectionery items; chocolate flavoured confectionery; chocolate for confectionery and bread; confectionery for decorating christmas trees; clear gums [confectionery]; coated nuts [confectionery]; confectionery; confectionery bars; confectionery chocolate products; confectionery containing jelly; confectionery containing jam; confectionery having liquid spirit fillings; confectionery having liquid fruit fillings; confectionery having wine fillings; confectionery ices; confectionery in frozen form; confectionery in liquid form; confectionery in the form of tablets; confectionery items coated with chocolate; confectionery items formed from chocolate; confectionery made of sugar; non-medicated confectionery; non-medicated confectionery products; crystal sugar pieces [confectionery]; dairy confectionery; dragees [non-medicated confectionery]; flavoured fillings for confectionery; flavoured sugar confectionery; bread; pastries; ices; flour confectionery; fondants [confectionery]; frozen yoghurt [confectionery ices]; fruit drops [confectionery]; frozen yogurt [confectionery ices]; fruit jellies [confectionery]; ice confectionery; ice confectionery in the form of lollipops; ice cream confectionery; non-medicated iced confectionery; liquorice [confectionery]; liquorice flavoured confectionery; lollipops [confectionery]; lozenges [confectionery]; lozenges [non-medicated confectionery]; mallows [confectionery]; marshmallow confectionery; non-medicated mint flavoured confectionery; non-medicated chocolate confectionery; non-medicated confectionery containing milk; non-medicated confectionery in jelly form; non-medicated confectionery candy; non-medicated confectionery containing chocolate; non-medicated confectionery having a milk flavour; non-medicated confectionery having toffee fillings; non-medicated confectionery in the form of lozenges; non-medicated confectionery in the shape of eggs; non-medicated confectionery for use as part of a calorie controlled diet; non-medicated flour confectionery; non-medicated flour confectionery coated with chocolate; non-medicated flour confectionery coated with imitation chocolate; non-medicated flour confectionery containing with chocolate; non-medicated flour confectionery containing imitation chocolate; non-medicated mint confectionery; non-medicated sugar confectionery; nut confectionery; orange based confectionery; pastilles [confectionery]; pastry confectionery; peanut butter confectionery chips; peanut confectionery; peppermint for confectionery; peppermint pastilles [confectionery], other than for medicinal use; potato flour confectionery; prepared desserts [confectionery]; rock [confectionery]; sherbet [confectionery]; sherbets [confectionery]; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; snack bars containing dried fruits [confectionery]; snack bars containing grains [confectionery]; snack bars containing nuts [confectionery]; snack foods consisting principally of confectionery; stick liquorice [confectionery]; non-medicated sweets in the nature of sugar confectionery; truffles [confectionery]; rum truffles [confectionery]; wafers; pastries; caramels [candy]; sweetmeats [candy]; chocolate; pralines; pralines made of chocolate; chocolate wafers; chocolate caramel wafers; bean-jam filled wafers (monaka); rolled wafers [biscuits]; cocoa; marzipan; crackers; rusks; gingerbread; sandwiches; muesli; popcorn; tarts; halvah; chocolate beverages; coffee; tea; tea-based beverages; coffee-based beverages; honey; corn flakes; oat flakes; chips [cereal products].
The Roshen Confectionery Corporation filed Israel Trademark Application Number 267962 for confectionery; candies; all included in class 30.
and the Kjarkov Biscuit Factory filed Israel Trademark Application Numbers 271092 and 200633 for biscuits; pastries; cakes; cookies; crackers; all included in class 30.
Roshen and Kjarkov have filed for other Krasnyi Octybar marks to be canceled for lack of use. These include Israel Trademark No. 182758, 182759, 184179 and covering Waffles; confectionery for decorating Christmas trees; cakes; pastries; peanut confectionery; almond confectionery; pasty; cocoa; cocoa products; caramels [candy]; sweetmeats [candy]; liquorice [confectionery]; peppermint sweets; coffee; crackers; meat pies; farinaceous foods; candy for food; fruit jellies; marzipan; custard; honey; ice cream; sherbets [ices]; muesli; mint for confectionery; cocoa beverages with milk and coffee beverages with milk; coffee-based beverages, tea-based beverage, chocolate beverages with milk, chocolate-based beverages, cocoa-based beverages; lozenges; petits fours [cakes]; biscuits; pies; fondants; pralines; gingerbread; chewing gum, not for medical purposes; sugar; cake paste; confectionery; rusks; sandwiches; almond paste; tarts; cakes (Edible decorations for-); halvah; bread; tea; all included in class 30.
All these registered marks that are under attack are for similar long lists of confectionary in Class 30. To complicate things still further, the various importers are also parties of the three way competing marks proceeding.
Back in January 2015, the Adjudicator of Intellectual Property, Ms Yaara Shoshani Caspi, refused to allow the competing marks proceedings and the cancellation proceedings to be combined as she considered that contradictory claims were made.
The parties appealed this decision to the District Court and the appeal was rejected by Judge Schitzer after the parties reached an agreement. However, the parties do not agree on what agreement they reached. Ms Yaara Shoshani Caspi notes that it not for her to interpret the agreement reached by the parties in the other forum and thus declined to address this issue. Since, however, the request to suspend the cancellation proceedings until after the competing marks ruling was rejected by the District Court, she sees no reason NOT to proceed with the competing marks proceedings.
The parties are given 21 days to challenge this decision, and then two months to present their evidence regarding the competing marks.