Israel Trademark Application Nos. 262467 and 262468 are stylized marks in English and Arabic respectively, for Halibo, covering Milk and milk products; powdered milk; milk substitutes; all included in class 29. The applications were submitted by Sons of George Shukha Food Import and Marketing Ltd on 30 January 2014.
Israel Trademark Application No. 268703 is for the word mark in English (Halibo) and Arabic (حليبو). The application covers dairy and milk products, and was filed by Fareed Khalaf Sons Company, a Jordanian company, on 29 September 2014.
As the Sons of Shukha’s applications were still pending, a competing marks procedure ensued.
On 2 August 2016, the Sons of Fareed Khalaf successfully requested to stay responding to a final office action alleging that their mark was inherently non-distinctive and therefore contrary to Section 8a of the Trademark Ordinance due to the competing marks proceeding. On the same day, the two applicants filed a joint request for an extension to file their evidence in the competing marks proceeding which was approved, giving them until 17 November 2016. This was extended again until 24 November 2016.
On 22 November 2016. the Sons of George Shukha opposed the staying of the Office Action against Fareed Khalaf Sons. The Agent for the Sons of George Shukha (Seligsohn & Gabrieli) claimed that they were not informed of the decision and only learned about it in the November 2016 decision, denying them an opportunity to submit a timely and response. They also submitted that the Examiner had issued two documents, one on 17 December 2016, and a final one on 3 May 2016[???]. Both concluded that the mark was descriptive and lacking inherent distinctiveness for the goods in question, and putting an onus on the Applicant to show acquired distinctiveness under Section 8b of the Ordinance.
On this basis, the Agent for the Sons of George Shukha argued that Commissioner Kling’s ruling from the Angel Bakery vs. Confectionary Angel Ltd from 24 January 2016, with the Agent for the Sons of George Shukha noting that there was a possibility of an absurd result wherein the wherein Fareed Khalaf Sons could conceivably prevail in the competing marks procedure but then have their pending 268703 Application refused on substantial grounds as not being registerable
In competing marks procedures, the commissioner has to side which mark takes precedence, i.e. which should be registered. As a general rule, the question of precedence is considered independently of the issue of registerability, with a rebuttable assumption that both marks are per se registerable, unless the other mark is registered first. See Bagatz 228/65 Fromein vs. Pro Pro Biscuit LTD p.d. 19(3) 227. As Judge Zussman ruled on page 341 thereof:
The proceeding under Section 17 of the Ordinance (now section 29) is not intended to determine the question of registerability. The Commissioner assumes that both marks are inherently registerable and, at a later date, if a mark is published as allowed, this may be challenged in an opposition proceeding.
that said, Justice Zusman ruled that the commissioner should assume validity only in cases where he was prepared to accept the presumption that both applications were inherently registerable were it not for the existence of the other competing application. Otherwise, it was moot determining which mark should prevail. As Zussman put it:
If the commissioner is not ready to make the assumption, he should not implement section 17 (i.e. section 29) and decide which mark is preferable, of cause the Supreme Court to rule on the issue, as it is pointless to do so….
In Bagatz 450/80 El Din vs. Commissioner of Patents, p.d. 35(2) 187 on page 189 Juge Aharon Barak repeated this ruling, adding that there was no point having a competing marks procedure unless the commissioner actually considered both marks registerable:
Indeed, what is the point of a long and tiresome legal proceeding under section 29 of the Ordinance if eventually it will transpire that the prevailing party is subsequently unable to register his mark.
In the case before me, the parties themselves have not decided whether it is preferably to hold a competing marks proceeding and then consider the registerability of the second mark or to first consider the registerability of the second mark and only then to hold the competing marks proceeding.
In this instance, the Adjudicator of Intellectual Property disputes, Ms Yaara Shoshani Caspi considers that theseis no assumption of validity of these marks in the absence of the competing mark, since there are office actions claiming lack of distinctiveness against the Sons of Fareed Khalaf’s word marks which challenge the inherent registerability of the marks themselves. The Sons of George Shukha do not have such challenges. In this case, it seems more sensible to let the Sons of Fareed Khalaf attempt to show that there mark is registerable per se before proceeding with the competing marks action. Otherwise, both parties are liable to expend large amounts of resources fighting the competing marks procedure which could well end up being unneccessary and superfluous.
Consequently, the Sons of Fareed Khalaf request to suspend the need to respond to the Office Action prior to a ruling in the Competing marks procedure is refused. To prevent the competing marks procedure being suspended indefinitely, Ms Yaara Shoshani Caspi went on to rule that a response to the office action should be submitted within 30 days. Once the registerability or otherwise of the Sons of Fareed Khalaf is established, should a competing marks procedure still be necessary, Ms Yaara Shoshani Caspi will set out a timetable of deadlines for the various stages of the procedure.
There is a second issue regarding the 289527 application, in that the Sons of George Shukha have complained that this mark is apparently being fast-tracked despite the fact that no request for accelerated examination was submitted, and requested that the office action be canceled.
Having read and considered the submissions by the parties, Ms Yaara Shoshani Caspi rejects the request to cancel the office action from 15 November 2016, i.e. the day after the Application was filed. It is true that the 289527 Application was filed after a competing marks procedure was instituted between the 262467 and 262468 and 268703 marks, but this is not significant. This mark is being examined with haste in accordance with the procedures since the Examiner is aware that there is a competing marks procedure regarding similar marks and so she is cojoining this case to the competing marks procedure. The request to cancel the proceding is rejected and the 289527 Application will be cojoined.
The Court secretaries will inform the parties. In these circumstances, no costs are awarded.