YALA and YA’LLA TOURS Can Coexist in Tourism Industry – No Likelihood of Confusion

The word YALA is Hebrew slang for ‘Get a move on!’

The Fattal chain of Israel hotels filed Israel Trademark number for the stylized mark “YALA” shown below. The mark covers advertizing and hotel related services in classes 35 and 41.

265772

The Applicant filed for expedited examination and was allowed, but a copy of the Notice of Allowance was sent to Ronen Paldi who owns Israel trademark 97324 and who duly filed an Opposition. Ronen Paldi has a very different looking stylized mark for YA’LLA TOURS shown below. The mark is in class 39 and disclaims the word tours.

97324 Ya'alla

The Opposer claims to organize tours in Israel and to work with Israeli hotel chains. He claimed that Fattal’s application was confusingly similar and lacking in distinctiveness and allowing it was against the public interest since the filing was based on inequitable behaviour. The Applicant denied this and claimed that there was no confusing similarity between the two marks because the services provided under the marks was different. The Opposer’s advertising was mostly in the US and under the Ya’lla Tours USA mark and not under the mark as registered. The Applicant went on to note the different distribution channels and customer base.

The parties filed their evidence. The Opposer  filed a statement in which he laid out his factual claims. The Applicant filed a statement of Mr Nadav Fattal who is the Digital Advertising Manager of the Fattal group.

OPPOSER’S CASE

Mr Paldi testified that he had established his company in 1993; originally as a tour pilgrimage organizer and later as  an organizer of tours to the Middle East, the Persian Gulf, Greece and Turkey. The mark was chosen back in 1993 since it reflects the Middle East but is recognizable to Western ears. Mr Paldi stated that he uses his mark on coaches used to carry tourists in Israel and on publicity and Internet materials distributed in Israel and elsewhere. Over the 23 years since founding the company, the business has company has done some 20 million shekels worth of business in Israel. Mr Paldi also owns the Internet domain http://www.yallatours.com.

APPLICANT’S CASE

Mr Fattal stated that his intention was to use the mark to advertise last-minute hotel deals. The company runs hotels in Israel and Europe and the App. was intended for use by Israelis, whereas the opposer’s services were aimed at foreigners abroad and any usage in Israel was with service providers and not end users. The App. had been downloaded 80,0000 times and had generated sales of 1.5 million shekels.

RULING

Citing the Bible Seligsohn, “Trademark and Related Laws”, p.p 20-21, 1973, the Deputy Commissioner Ms Jacqueline Bracha noted that ‘lack of distinctiveness’ is assessed objectively with regards to the distinctiveness scale, to ensure that words that should remain in the public domain are available for use by the public. ‘Lack of distinctiveness’ is not with respect to specific competitors marks. She did not consider the word descriptive for tourism services and rejected the argument that the mark lacked distinctiveness.

As to whether the mark is confusingly similar to the competitors, citing Taam Teva vs Ambrosia, and the Family Magazine ruling, she noted that this should be examined by applying the five six part triple-test of:

  1. appearance
  2. sound
  3. customer base
  4. sales channels
  5. everything else of relevance
  6. common sense

Sight and Sound

Whilst making due note of the first impression, dominant elements and everything else, the marks look very different, since one is monochrome and the other is very gaudy. The graphical elements are different.

However, the dominant word is Yala (Ya’alla). Citing the Clearasil – Stayclear decision, the Deputy Commissioner ruled that despite the word ‘tours’ being generic, one still has to consider the mark in its entirety.  Although the visual similarity is negligible, there is some audible similarity. As clarified in Appeal 5066/10 Angel vs. Berman (30 May 2013):

The relative consideration given to the visual and audio aspects of a mark depend on a number of variables, including the type of product in question. Thus with products removed by the customer from the shelf, the visual aspects are given more weight, but with goods ordered over the counter, the sound of the name is more important.  

The applicant’s mark is used as an App and the visual aspect dominates. The Opposer’s mark is different in that tourist services are referred to by name and the sound of the mark is thus as, if not, more important than its appearance.

Furthermore, one cannot separate the audible and visual aspects of a mark. As stated in “Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 313:

“So, for example, it is possible that a mere phonetic similarity between trade marks may create a likelihood of confusion. On the other hand, the degree of phonetic similarity will be of less importance if the goods are marketed in such a way that the relevant public will usually see the trade mark, or if one of the marks has a clear conceptual meaning. All will depend upon the global assessment.”

Anyway, the appearances of the marks are very different and the pending mark is unlikely to be heard whereas the registered mark to the opponent is likely to be sen and said. Ms Bracha concludes that the visual aspect is dominant and the likelihood of confusion is negligible.

Services and Customers

The tests for assessing the types of services and customers is given in Seligsohn, “Trademark and Related Laws”, p.p 82-83, 1973, based on the British case-law as follows:

  1. What is the nature of the goods and their constituents?
  2. How are the gods used?
  3. What are the regular distribution channels?

 If any of these are similar it is fair to conclude that the goods are similar but the third consideration appears to be less weighty than the others.

As per the Omni ruling, where the marks compete, one should consider if they are offered on the same shelf (metaphorically as well as literally).

There is a vast difference between last-minute hotel deals and organized tours. The services do not compete in the sense that one is unlikely to take advantage of a last minute hotel vacancy in Israel or choose a tour of Turkey that is advertised in the US.

The marks are not even complimentary in that the same customer is unlikely to purchase both services.

The App is aimed at Israelis and is in Hebrew.  Apart from words like deluxe, the interface is in Hebrew and so although technically a Norwegian tourist on a tour could download and use the App in practice this would not happen.

The Opposer lives in the US, offers services in the US and trades under the name Yalla Tours USA. Business in Israel is confined to ordering from the Israel tourism industry. The goods and distribution channels are very dissimilar.

Everything Else

The Opposer claims that the Applicant was aware of their registered mark and selected the application to build on the Opposer’s reputation. The Deputy Commissioner did not find this argument persuasive since the customer base is so different. Even if the Applicant was aware of the Opposer’s mark the claim of building on their reputation is not substantiated.  Furthermore, the cross-examination demonstrated that Mr Fattal, whilst ultimately providing the Opposer’s company with services, does it through local tour operators and claimed to be unaware of the Opposers’ services.

The Opposer’s arguments are rejected and the Deputy Commissioner concludes that the  marks are not confusingly similar. As an afterward, although the Opposer claimed that their mark was well-known, this claim was unsubstantiated.

Verdict

The opposition is rejected and the Opposer is ordered to pay 30,000 Shekels costs within 30 days or interest will be incurred.

Ruling re 265772 “YALA”, Ms Bracha, 20 April 2016

COMMENT

There is a judicial concept of related goods. It is not inconceivable for one service provider’s service to be associated with an other. Frankly I think that in tourism, the service provider is rarely of interest. People look at destination, what they are getting, and the cost they are paying. Although either or both can expand their services or branch out into similar services.Whilst current usage by the parties could change, trademark rulings can always be revisited for ever, as marks can be renewed for ever.  The decision looks radical prior to being analyzed, but is nevertheless convincing.

One final point. the Deputy Commissioner is aware that American tourists who book tours do not know if they will be staying in Fattal hotels and Mr Fattal may indeed not know that a group has booked via Ya”alla Tours since local tour operators mediate. However the tourists see Ya”alla Tours on their buses. Certainly Jewish tourists from the US may subsequently live here. People seeing Ya’alla tour buses mighty identify them with the App. There is room for consumers to assume a connection and for the activities of one company to impact the reputation of the other. Possibly this will be symbiotic and positive and to the advantage of both. One company chose a word because it means ‘get a move on’ and they are offering last-minute special deals. The other company chose the word since it is Arabic and is easily memorized to Westerners. It is not like Jihad and does not have negative connotations, and is noy like Hummous which is actually pronounced differently by Westerners than by Arabs, and doesn’t have connotations of coming in a plastic container and must be kept refrigerated to avoid stomach upsets. In other word, the two parties chose the same term for slightly different reasons.

 

 

 

 

 

2 Responses to YALA and YA’LLA TOURS Can Coexist in Tourism Industry – No Likelihood of Confusion

  1. Rebeccah G. says:

    This decision was an interesting read. I suspect that the USPTO would have reached a much different conclusion (holding that the dominant literal matter YALA/YALLA is primary; is is really true that folks on an organized tour don’t use last minute travel book apps?). What I found the most interesting was the excerpted witness testimony regarding the application in content being only in Hebrew – particularly the questions of the deputy registrar. Is the deputy registrar as fact-finder present during the depositions or in a separate trial phase? In the U.S., oppositions are conducted via testimonial depositions without the fact-finder, and the Trademark Trial and Appeal Board must then rely on the transcripts.

    • Rebecca,

      The Commissioner or Deputy is generally an umpire who reviews evidence submitted. However, they can and do their own fact finding, such as google searching themselves if they feel so inclined. They have a great deal of freedom in deciding whether or not to collect evidence directly and how much weight to place on evidence submitted. They do, however, extensively document their rulings which makes appeals possible.

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