Epilady 2000 LLC filed Israel Trademark Application No. 258887 for “Epilaser” covering Domestic hand-operated cosmetic apparatus, namely, electronic aesthetic hair removal and skin treatment devices using multiple light sources such as lasers and LED’s based devices. The Application was submitted on 1 September 2013.
Epilady’s application was examined on 21 January 2015, but prior to allowance, on 4 February 2015, Mr Yitzhak Dwek filed Israel Trademark Application No. 272079 also for “Epilaser” covering Apparatus and instruments for hair removal by laser; all included in class 8 and Cosmetic services; hair removal services; beauty care for human beings; all included in class 44. Mr Dwek requested expedited examination and for some reason the Israel Patent Office failed to notice the competing mark.
The second mark was accepted for expedited examination and the Trademark Department informed Epilady that a competing marks procedure was initiated.
The parties failed to come to an arrangement and submitted their evidence for a Patent Office ruling. Both parties argued that their case should take precedence. Epilady submitted an Affidavit by Mr Yehuda Levi, the head of Epilady’s legal department, and Mr Dwek submitted an Affidavit as well.
Mr Levi submitted that Epilady had 30 years reputation for epilatory services and used the mark Epilady and derived marks.He further denied ever having come across Mr Dwek’s marks. Epilady further claimed to have spent hundreds of thousands of Shekels marketing Epilaser in Israel and abroad, over the period from 31 October 2014 to 3 February 2015. The Epilaser mark had been submitted for registration by Epilady in the US, EU and Japan.
Mr Dwek claimed usage since 2006 via his company Air Bus [MF – no explanation is given as to why Mr Dwek is using the name of a well-known European airplane manufacturer]. During that period, Mr Dwek claimed to have ordered 200 home use hair removal units from South Korean manufacturers. These units were sold in Israel under the Epilaser name. Mr Dwek further affirmed that from 2008, the mark was more widely used and that the TV sales chnanel had committed to purchasing 100 units under the Epilaser brand from him.
In cross-examination, Mr Levi further added that Epilaser is a natural development of their very well known main mark [MF – I think he means that the name Epilaser is a variation of Epilady, not that using lasers to remove hair is natural]. Epilady claimed to have used a foreign law firm to do an availability check for Epilaser prior to submitting their trademark application. Furthermore, the Epilaser mark was registered by a sister company, S&Y in Hong Kong.
The parties summarized their cases in writing. Epilady submitted additiional evidence of sales and orders in their summary, but Mr Dwek opposed this being added in the summation stage, and the Deputy Commissioner agreed that this evidence could not be considered.
section 29a states:
If different persons independently submit identical or confusingly similar trademark applications for the same goods or for goods in the same category, and the second application is filed before the first application is allowed, the Commissioner may allow the parties to negotiate an arrangement and endorse this agreement, or may, if the parties fail to reach an agreement or if the agreement is unnacceptable, decide which mark takes precedence, giving his reasons for so-doing.
There considerations are given in the case-law and include which application was first submitted, the amount of usage and considerations of equitable behaviour. See 2498/97 Robby Boss vs. Hugo Boss PD 52(5) 665, 2498/97 Bacardi vs Registrar of Trademarks PD 25(2) 87, 91, and 8778/04 Yotvata vs. Tenuva 30 April 2007.
Since these marks are identical and cover identical goods, they cannot be registered in parrallel and so that option, given in Section 30 can’t be implemented. Furthermore, the parties did not request this.
Epilady’s request was the first to be filed. |However, this is a relatively minor cosnideration.
Mr Dwek provided a coherent and convincing explanation for why Epilady selected the Epilaser mark and filed applications in various jurisdictions. The Deputy Commissioner is in no doubt that Epilady is not trying to free-ride on Mr Dwek’s reputation in the mark. Back when Epilady filed their application, there is no indication that Mr Dwek was using the mark Epilaser and there is no doubt that Epilady is a very well known mark.
In 2006, Mr Dwek ordered 200 Epila Hair Removers which he sold under the Homepilaser brand. That was the name mentioned in advertisements from September 2008 and the communications with the TV sales channel also related to HOME PILASER.
In December 2014, Mr Levi wrote to the Ostra company about usage by Mr Dwek of the Epilaser name., and it transpires that in 2014, Mr Dwek was still using the Homepilaser mark for epilatory equipment. It was only after the communication with the Ostra company that Mr Dwek sought to register the Epilaser mark which was not then in use.
During this period of the end of 2014 and the beginning of 2015, Epilady was already using the Epilaser mark and had ordered a Facebook page, hoardings and a TV advertising campaign.
Thus it transpires that Mr Dwek filed his application knowing that Epilady was using the mark and had done so for 18 months or more. Apart from Mr Levi’s letter there is no evidence that Mr Dwek was using theEpilady mark.
In the circumstances, it appears that Mr Dwek’s application was not made in good faith.
Usage of the mark
Mr Dwek indeed sold 300 laser epilation units, but did so under the name Homepilaser. it is not clear whether the units ordered for the TV Sales channel included these. In the absence of contrary evidence it appears that the units advertised in 2014 are included in this number. In respect to all of these sales, the name Homepilaser and not Epilaser was used.
Epilady used the mark from 2013 and started advertising it heavily in 2014, spending over 1.5 million shekels in so-doing.
In his summary, Mr Dwek alleged that the advertisements themselves were not submitted, whereas as he himself was not cross-examined, his evidence was not challenged. As to the lack of cross-examination, Ms Bracha refers to paragraph 94 of the 4584/10 Israel vs. Regev Shovar ruling from 4 Dec 2012 and states that her conclusions were based on the evidence submitted:
As a general rule, there is an established ruling that failure to cross-examine works against the party that gives up this right. However, this does not mean that the evidence not challenged is accepted at face value and even if a party decides not to cross-examine the witness, the court is not obliged to accept the witness’s testimony if there is good reason not to do so. (see Kedmi on Evidence part 4 1953, (2009). For example, if the party not cross-examining brings additional evidence, the judge does not have to accept the testimony merely because it was not challenged. Thus failure to cross-examine works against the party that does not use this right, but does not result in the testimony being automatically accepted.
Thus Ms Bracha sees no reason to accept Mr Dwek’s evidence merely because it was not challenged by Mr Levi. Furthermore, since Mr Levi’s statement regarding advertising costs was backed by tax invoices, it may be accepted as being true.
In weighing the evidence, it appears that Epilady’s case is the stronger one in all three tests. Consequently it is allowed to register and Mr Dwek’s is refused. Since Epilady was only represented by inside counsel and did not incur additional legal expenses, they are not entitled to costs. See 166631 Unipharm vs. Neurocrine Biosciences LTD.
Dwek means priest, and like his attorneys, Cohen-Zedek from Pearl Cohen, the name implies belonging to the priestly caste. This does not imply honesty or integrity, but we note that in Temple times, the priests did epilate.
Epilady is a market leader for epilatory devices and has been for decades. They are not entitled to monopolise the prefix epil since it is descriptive, but I am not sure that in Israel, many people using epilatory systems at home (as opposed to professional beauty salons) are aware of the word epilatory. That as mat be, the mark was not given due to Epilady having a similar mark, but this fact was merely used to collaborate their claim for choosing the mark in good faith. In this case, Dwek did not have a case and one wonders why he fought the opposition?