Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” (stylized)

pliskaIsrael Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” (stylized) was registered on 1 September 2014 for alcoholic drinks in class 33. On 24 March 2005 half the ownership was transferred from Capital Food Company ltd. to D.I.L. Trade (Maglan) ltd.

On 2 February 2016, Vinex Preslav Joint-Stock Company filed a request to have the trademark struck from the register due to alleged lack of use during the previous three years. Vinex Preslav Joint-Stock Company is a Bulgarian company that claims to have used the term Pliska for alcoholic beverages since 1994, and has registered the mark worldwide under the Madrid Protocol since 2005. Vonex Preslav claim to have sales in Israel.

Furthermore, Vinex Preslav notes that there is an agreement between the registered owners, Capital Food Company Ltd. and D.I.L. Trade (Maglan) Ltd, that was submitted to the Israel Patent Office, under which D.I.L. Trade (Maglan) Ltd undertook not to use the mark from 1 January 2005 onwards.

On 31 March 2016, Capital Food Company Ltd. submitted their statement of case. They claim that their rights to the Pliska trademark outweigh those of Vinex Preslav, that they have used the mark in recent years and intend to continue using it. Capital Food Company Ltd allege that a cancellation request filed 14 years after a mark was registered is surprising and itself indicates that the mark has a reputation.

On 25 May 2016, Capital Food Company Ltd submitted a request to transfer the mark to Vinex Preslav in accordance with an agreement reached between the parties. However, on 31 May 2016, Vinex Preslav submitted their evidence to have the mark canceled and requested a decision based on the evidence submitted without a hearing.

Vinex Preslav requested that the cancellation ruling be based on a statement by Mr Vadim Farber, the CEO of Carmi International Foods Ltd, who is the distributor in Israel that Vinex Preslav uses. Mr Vadim Farber affirmed the existence and contents of an agreement between Capital Food Company Ltd. and D.I.L. Trade (Maglan) Ltd. under which D.I.L. Trade (Maglan) ltd. were obliged not to use the mark, and he further affirmed that the mark had not been used in Israel over the previous three years.

Vinex Preslav also submitted a statement from Ronen Menashe, an investigator at SML Israel Intelligence Ltd, in which he affirmed that his investigations had yielded no evidence of usage by D.Y.L. Trade (Maglan) Ltd. today or over the past ten years. Mr Menashe had held a conversation with the director of D.I.L. Trade (Maglan) Ltd. who explained that he conducted his affairs via a further company, since D.I.L. Trade (Maglan) ltd.  is no longer active. Furthermore, the new company does not make any usage of Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА”. Mr Menashe also visited a number of shops spelling wines and spirits but none of them sold products with Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” on it, or any other products manufactured by D.I.L. Trade (Maglan) ltd.

On 21 June 2016, Capital Food Company Ltd announced that they no longer had any connection with D.I.L. Trade (Maglan) Ltd, would not be submitting evidence, and requested a ruling based on the material of record.

RULING

Section 41 of the Trademark Ordinance 1972 states:

41. [a] Without prejudice to the generality of the provision of sections 38 to 40, application for the cancellation of the Registration of a trade mark regarding some or all of the goods or classes of goods in respect of which a trade mark is registered (hereinafter – goods regarding which the cancellation is requested) may be made by any person interested on the ground that there was no bona fide intention to use the trade mark in connection with the goods for which it is registered in connection with the goods regarding which there is a request to cancel the registration and that there has in fact been no bona fide use of the trade mark in connection with those goods in connection with the goods regarding which there is a request to cancel the registration, or that there had not been any such use during the three years preceding the application for cancellation.

The purpose of the section is to keep the trademark register clean from non-used marks. See BAGATZ 67/71 “Prem” Ltd. vs Registrar of Trademarks, p.d. 28(1) 802, 811, where, with respect to the previous version of the section it was ruled that:

Section 22 is intended, primarily, if not exclusively, to purify the trademark register of all marks that are not in use and without bona fide intent to use. This is a national issue, so that registers are not weighed down with theoretical marks. It was not incidental that the legislators required bona fide usage after registration.

The requester for cancellation first claimed that the owners had never used the mark in Israel. Following the request to transfer the mark to them by the current owners, there is no need to cancel the mark, but only to transfer ownership and to delete D.I.L. Trade (Maglan) Ltd from the register.

It will be noted that Section 41 of the ordinance allows for full or partial cancellation of a mark by narrowing the list of goods covered.  There is, however, no provision for cancelling some owners whilst leaving others as registered owners.

The request to cancel the mark focuses on a lack of usage by D.I.L. Trade (Maglan) Ltd, and the investigator did not attempt to determine whether or not Capital Food Company Ltd was using the mark. Mr Farber testified that the owners were not using the mark, but Capital Food Company ltd themselves claimed usage in recent years but did not substantiate this with any evidence. Furthermore, Capital Food Company ltd transferred their share in the mark to Vinex Preslav, leaving the fate of the mark with the Commissioner, and without making any demands themselves.

The net effect of this is that the request is really one of correcting the register by deleting D.I.L. Trade (Maglan) Ltd as an owner. Section 38(a) of the ordinance states:

38(a) Subject to the provisions of this Ordinance, any person aggrieved by the non-insertion or omission from the Register without sufficient cause, or by any entry wrongly remaining on the Register, or by any error or defect in any entry in the Register, may make application in the prescribed manner to the Supreme Court or may, at his option, make such application in the first instance to the Registrar. 

The requester for correcting  the register is an aggrieved person and is covered by Section 38a). It has previously been established that an “aggrieved person” is no different from the “interested party” referred to in section 41 of the Ordinance (- see Seligsohn “Trademarks and Related Laws” 1973, page 105. The Supreme Court related to this in Civil Appeal 941/05 Wine Maker’s Cooperative of Rishon l’Zion and Zichron Yaacov  vs. The Kerem Company Ltd. p/d/ 61(3) where it is stated:

The phrase “he that is disadvantaged” is explained liberally in the case-law to include someone who suffers some disadvantage in some manner vis-a-vis some third-party who enjoys a trademark registration that they are not entitled to. This explanation is based on the English phrase “Aggrieved Person” as understood in the English Law that the  Ordinance brings into Israel Law.

 The requester for cancellation fulfils this precondition since, according to his statement, he’s used the mark in his home country for decades, has usage abroad and is interested in using the mark in Israel.

The Commissioner’s has wide authority in this regard, a previous commissioner ruled regarding Israel Trademark No. 66312 “NIPRO” in Abbott laboratories vs. Nissho Corporation 13 July 1999:

Since Section 38 deals with various changes to the register, from cancellation due to lack of distinctiveness and including transfer of rights in a mark from one entity to another, the considerations behind allowing amendments depends on the underlying justification and on the scope of amendment requested. There are cases where a Section 38 amendment will be allowed and others where it will not.

This is demonstrated by the fact that the legislators limited the period under which a mark may be cancelled due to non-registerability, but did not limit the period during which the register could be amended (see section 39(a1) of the Ordinance, and also the words of explanation (published on 27 July 1999 Page 525 in the protocols of the Law for amending Intellectual Property legislation in light of the TRIPS agreement 1999, Book of Laws 1721 from 30 December 1999, Page 48, which resulted in this section being added to the Ordinance.

Nevertheless, when considering a request to amend the register, it is necessary to consider the rights of third parties that could be disadvantaged by the amendment. Such third parties are not merely the parties themselves, but include competitors who if the amendment is not allowed, could file for cancellation of the mark due to lack of use.

Furthermore, the requester of the cancellation wishes to be registered as the user themselves, after testifying that the mark is not actually in use. The correct procedure is to have the non-sued mark cancelled and then to file a new application. The new application is then open to third-party challenges by way of opposition and allows other parties, their say.

Additionally, if the mark is indeed dormant for so long, this increases the likelihood that other parties may be using the mark and assigning the mark in this manner could leave such other parties exposed to infringement actions.

Thus even if the end result is that the requester of the cancellation be registered as the mark owner, this result should be achieved with consideration for the rights of others, and not by devious means.

In light of the above, Deputy Commissioner Ms Jaqueline Bracha rules as follows:

  1. The request to amend the register such that D.Y.L. Trade (Maglan) Ltd is replaced by Vinex Preslav as the owner is not acceptable
  2. If Vinex Preslav wishes to continue with the cancellation request, they have 30 days to show lack of use of both owners. Since Capital Food Company Ltd. have stated that they will not be submitting evidence themselves, the decision will issue based on the submission by Vinex Preslav only
  3. Vinex Preslav may abandon the cancellation request within 30 days; the mark will remain owned by two parties and Vinex Preslav may substitute themselves for Capital Food Company Ltd as the part owner as per the transfer of ownership record that was submitted.

Cancellation or Change of Ownership of Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” (stylized) Ms Jaqueline Bracha, 22 August 2016

 

 

 

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