At last we bring you the ruling concerning the registerability of Israel Trademark Application No. 234855 to Yidiot Internet, the website portal of Yediot Achronot in light of previous registered word mark for BIG DEAL owned by a chain of discount stores.
The main issues discussed are whether the existing mark can be considered as a well-known mark and whether there is a likelihood of confusion or evidence of actual confusion between the chain of discount stores and the Internet portal.
For those who’ve missed the earlier chapters in this exciting case, we first reported on this case back in 2014 see here. We then reported on an interim skirmish, and most recently, on a request to strike evidence in September 2016. This is the decision. However, we note that it may be appealed through the courts, so there could be sequels.
The mark was filed in Class 35 back in 2011 for promoting sales of third-party goods via coupons and the like. Ynet purchased the BigDeal.co.il for this purpose back in 2010.
The mark was opposed by H.A.B.Trading Ltd which has run a chain of discount stores called Big Deal since 1993, that peaked at 14 stores and now includes 8 stores selling bargain goods. Since September 2009, H.A.B.Trading Ltd owns Israel Trademark 131862 for the word mark BIG DEAL, also in Class 35, for “stores selling toys, kitchenware, disposables, domestic goods, children’s clothes, books and drawing books”.
The Opposer’s Claims
The Opposer filed and received a trademark application for the term BIG DEAL in capital letters. This means that they have exclusivity to the words, regardless of stylization. They have used the mark and various stylized logos for years. The opposer’s registered mark is well-known, is identified with them and so the Applicant’s mark is not registerable under Section 11(14) of the Trademark Ordinance 1972.
The Opposer notes that they sell goods both wholesale and retail from their stores and they also promote goods. Their actual usage of the mark is wider than the list of goods claimed in their trademark registration.
The Opposer’s company name is Big Deal and has been for years. The marks are confusingly similar and there is a danger of confusion when the sound or sight of the marks are compared. The Opposer believes that the public will link the Applicant’s mark with theirs and the Applicant will gain an unfair trading advantage. Thus the Opposer opposes the mark under Sections 11(9), 11(6) and 12 of the Trademark Ordinance. Furthermore, since there are no distinguishing features between the Opposer’s service and the Applicant’s services, allowing the Applicant’s mark to register would be contrary to Section 8(a) of the Ordinance.
The Opposer accuses the Applicant of inequitable behaviour and of fraud on the trademark office since the Applicant has misrepresented the Opposer as simply having a single local shop in Jerusalem, whereas in practice, the Opposer has a nationwide chain of stores.
The Opposer alleges that registration would be contrary to Section 11(5) of the Ordinance as it is against the public good.
The Applicant’s Claims
On 27 October 2013, the Applicant submitted their counter Statement of Claims. The Applicant considers that their mark is sufficiently different from the Opposer’s that the opposition should be dismissed. The Opposer’s mark covers a closed list of goods and does not cover additional activities claimed by the Opposer. The Opposer’s mark is not a well-known mark in the sense of the Law and does not provide the Opposer with protection in other classes and for goods beyond those listed.
The Applicant claims to have chosen their mark in good faith without prior knowledge of the Opposer’s mark. On learning of the Opposer’s mark they first attempted to reach an understanding with the Opposer and only filed their application after the Opposer ignored their attempts to negotiate.
The Applicant claims that the Opposer knew about their website but ignored it for three years and prior to the trademark submission and only responded once the Commissioner contacted them after allowing the Applicant’s mark for opposition purposes. The Applicant thus claims to have enjoyed three years of website usage prior to the Opposition being filed in August 2013.
Applicant claims to have invested in their website and in its promotion and that they have not tried to lever the Opposer’s mark. There is no overlap in sales channels or in consumers.
The evidence included Affidavits from the founder of the Big Deal chain of stores, the CEO of the chain and of various employees. The content of these Affidavits remained confidential, with the Applicant receiving only brief summaries.
The Applicant submitted an opinion from linguist and author Robik Rosenthal, an opinion from Professor Kamil Fox, a statistician who related to a survey concerning the application and an affidavit from the Applicant’s VCO of marketing.
In August 2018, the Opposer requested deletion of part of the evidence claiming that Mr Hochman’s affidavit on behalf of the Applicant included reference to factual matters that he had no first-hand knowledge of and also opined regarding matters of law. In an interim ruling of 11 September 2014, this request was refused.
The Opposer’s counter evidence was submitted on 16 December 2014 and included an opinion from Mr Yossi Sarid, Director of a Market Survey company, and an opinion from Adv. Eli Vilner regarding the linguistic status of the phrase “Big Deal”. On 10 November 2014, the Opposer requested full disclosure of evidence that lead to Professor Kamil Fox’s survey and was refused in a decision from 15 February 2015. They did, however, request and receive permission to file additional evidence themselves.
Following, this, the Opposer filed additional evidence on 26 February 2015 by way of five affidavits, including one from Shmuel Bar, the CEO. A hearing was held on 22 November 2015, the witnesses were cross-examined, and the parties filed their final submissions.
After hearing Mr Hochman’s evidence, the Adjudicator Ms Shoshani Caspi was not persuaded that his affidavit should be fully cancelled or even parts of it should be struck from the record. She felt it sufficient to give evidentiary weight only to facts that he had direct knowledge of, and that other sections be given less weight. She explained this as following a trend to adjust the weight given to evidence in preference to cancelling evidence, and cited the decision re Israel Trademark 238375 Brooks Sport Inc. vs. Speedo Holdiings B.V., 1 February 2016 to support this position.
Is the Opposer’s trademark a well known mark?
A central question in this instance is whether the registered Big Deal word mark of the Opposers may be considered as being a well-known mark under the Trademark Ordinance, and if so, it would be considered as warranting wide protection, even where there is no evidence of a likelihood of confusion with goods formally protected by the mark.
To answer this question, the adjudicator quoted from the definition of a well-known mark in the ordinance itself:
“Well-known trade mark” -a mark that is well known in Israel as a mark owned by a person that is a citizen of a member state, a permanent resident of such state or who has an active business or factory in such state, even if the mark is not a trade mark registered in Israel or if there are no users of the mark in Israel; for the purposes of determining whether a trade mark is a well-known in public circles relating to it and the extent to which it is known as a result of marketing, shall be taken into account, inter alia;
If the trademark in question is indeed a well-known mark under the Law, then Section 11(14) applies:
11. The following marks are not eligible for registration:
(14) a mark identical to or similar to a well-known trade mark being a registered trade mark, even in respect of goods not of the same class, if the mark sought to be registered might indicate a connection between the goods in respect of which the mark is sought and the registered proprietor of the trade mark, and the registered proprietor of the trade mark might be harmed as a result of using the mark sought.
The determination of whether the mark is fairly considered a well-known mark is made with the help of various tests that are found in the case law, such as Appeal 9193/03 Aktiebolag vs. Absolute Shoes pd 58(6) 869 and the Opposition to Israel Trademark No. 93261 Tentaz SRL vs. Asahi Kogaku Kogyo Babushiki Kaisha (2003). The tests include the reputation of the mark, how widespread its use and the period it has been in use, the scope of sales and market penetration, how well-known the mark is, how well it is used, whether it is registered and enforced, how distinctive it is and whether others are using similar marks. Thus if a number of parties are using a mark it won’t be considered the monopoly of one party. Acquired distinctiveness is more important than inherent distinctiveness. Also important are the types of goods and distribution channels and the extent to which the mark indicates that the goods are quality products.
With respect to the Opposer’s registered mark, the CEO of the Big Deal chain of stores noted that in 1993 the CEO selected the name Big Deal as a trademark. In 2001 – 2004 the chain had three stores, two in Jerusalem and one in Bnei Brak. This expanded to a chain of 13 stores across the country. This was widened further as a franchise. The company had changed their logo several times, although, with the passage of time, could not provide full details of the various reincarnations. They did, however, provide details of sales and advertising up to 2004, mostly in daily papers and local advertiser papers in Hebrew and other languages. Each store had a sign, various stickers and other accessories carrying the mark. The chain had advertised on the radio and had run their own one-off marketing publication. During the years 1994-1996 each store had sales of over One million shekels a year, and in the years 1997-2001 had average sales of 3.8 million shekels a year.
In 2001 to 2004, the Opposer’s business expanded, and over all this time, they had used the phrase big deal in one logo / form or another. Since 2004 the CEO claimed that the company had invested heavily in branding, however the evidence he was able to produce was from 2002-2003. He further testified that the company had given discount coupons, had created a consumer club in 2001 and had signs bearing the Big Deal name at the entrance to each store. He claimed that in the years 2008-2012 the company had sold an average of 1.8 million articles, and supported this with credit details and invoices.
Ms Shoshani-Caspi carefully considered all the affidavits and evidence and came to the conclusion that the Big Deal mark is not a well known mark identified with the Opposer. Furthermore, there was no evidence of marketing after 2012.
She notes that the graphical representation of the mark had changed a number of times and use of the mark had been inconsistent, or as the CEO Mr Perl put it: “The name BIG DEAL Is the name and brand, and the visual appearance is not that important.” She concluded that although the company had a registered trademark for the words themselves, the evidence shows that the mark was always stylized in one form or another. For example, often the word Big appears above the word Deal. Sometimes, the I of Big is replaced by an arrow. The sign is typically in red, white and blue. Occasionally there is a figure of a person wearing a hat and dressed in red, white and blue colours. Sometimes, the D of Deal has a label with the words Big Deal attached. The Adjudicator considers that this resulted in the public recognizing the wording in a graphic style as related to the company but not the words themselves.
As to the sales details, Ms Shoshani Caspi did not consider the details were a full disclosure in that he related to the Jerusalem and Bnei Brak stores for different periods and gave total sales which did not allow her to ascertain whether all the stores were profitable or only one or two of the stores, due to location, target population, etc. Taking into account the type of goods, she did not consider that the sales were particularly extensive. Mr Pearl’s assertion that in 2002-2004 the average sales exceeded nine million shekels in all stores was unsubstantiated as was Mr Bar’s statement that the total sales for all stores was 8 million shekels, which was only true for the period 2003-2007. She was surprised that the Opposers didn’t bring upto-date sales data in their affidavit, which could only help their case. That as may be, she could not conclude that the company had achieved many years of positive reputation due to marketing and advertising as the Ordinance and case-law require. Neither the words nor the logos could be considered as identified with the chain, neither when the entire population was considered, or any segment thereof.
Is there a likelihood of confusion?
The question of confusion between the marks is determined using the triple test.
Section 11(9) states that misleading marks cannot be registered.
11. The following marks are not eligible for registration:
(9) A mark identical with one belonging to a different proprietor, which is already on the register in respect of the same goods or 10 description of goods, or so nearly resembling such a mark as to be calculated to deceive;
Whether or not a mark is misleading is determined by applying the ‘triple test’ that was developed by the case-law, wherein the (a) sight, (b) sound, (c) type of goods and services (d) distribution channels and (e) everything else of relevance are considered. To this is added (f) common sense as a secondary test. See 261/64 Pro-Pro Biscuits vs. Fromine and Sons Ltd pd 18(3) 265 (1964); 5454/02 Taam Teva (1988) Tiboli vs. Ambrosia Superhub pd 57(2) 438 (2003) and 5792/99 Communication and Religious Education ‘Family’ (1997) vs. SMS Publicity, Marketing and Sales Promotions ltd 55, 933 (2001).
In this regard it is emphasized that most of the evidence that the Opposers produced includes various stylized versions of their mark. Some of these were even registered as trademarks but these were eventually abandoned due to failure to pay the renewal fees. Consequently, the triples test is applied to their registered mark.
The first thing to be noted is that the initial burden of proof is on the Applicant, but after they provide their evidence the burden switches from one side to another. See Opposition to Israel Trademark 170851 Gemcom vs. Orange, 11 October 2009 and Opposition to 175808 and 175809 Greek Cooperative Cigarette Manufacturing Company S.A. SEKAP SA vs. Gizeh Raucherdarf GmbH 6 December 2012.
The Adjudicator now compares the Opposer’s word-mark BIG DEAL as registered, with the Applicant’s logo, cites Seligsohn to the effect that the consumer has imperfect memory and notes that they look different.
Noting that the logo also includes the words Ynet in a font and colours that relates to the Yidiot news site, noting the white on red and grey colours of this element, the black colour of the word Big and the turquoise of the word Deal, she notes that there are also Hebrew words that do not appear in the word mark BIG DEAL. Ms Shoshani Caspi also notes that the letters B and D are in capitals. In the sound of the mark test, the Adjudicator notes that the Big and Deal elements sound the same, but the additional elements do sound different. Combining these elements, the Adjudicator concludes that apart from the common words Big and Deal which she gives little weight to, in her analysis, the marks are very different.
The Adjudicator could only concur with the Opposer that both companies were directed to the entire population, although she noted that the chain stores were particularly aimed at the Hareidi (ultra-Orthodox) community by virtue of their location. the main issue is that there is certainly a significant overlap.
As to the goods sold, Ynet’s Big Deal portal advertises electrical gadgets, tourism services, optical goods, furniture, sporting goods and the like but does not actually sell the goods themselves. The Opposer sells stationary and the like.
The Opposer tried to show an overlap in the list of goods, arguing that their registration wasn’t limited to the goods sold and that the Ynet’s portal included goods listed in the Opposer’s registration such as children’s clothing and kitchenware.
The Adjudicator did not consider this indicated that the same goods were sold in the meaning of the Ordinance. Whilst it is true that the Supreme Court Ruling 3559/02 Member’s Club Toto Zahav vs. the Counsel for Regulating Sports Gambling p.d. 59(1) 873 states explicitly that the goods should be interpreted widely, as explained above there is a difference between selling the right to purchase and between selling the goods themselves and between the sales interface which is online in one instance and physical shops in the other.
Another difference is that the two entities market in different ways. The Applicant only markets via their Internet site and the Opposer only markets via their stores.
As to the use of coupons, the did not consider the discount coupons distributed via the Coupon of the State om 2005 to 2007 and via Isracard credit cards was comparable to the consistent usage of coupons by the Applicant.
In light of the above and after concluding that the Opposer’s mark is not well-known in the sense of the case-law, and the various differences in distribution channels, clients and goods, there is little danger of customers being mislead.
Other Considerations and Common Sense
The Adjudicator was impressed that the Ynet with the Y in white on a red circle and the grey net was distinctive, well known and identified with Yediot Achronot (Israel’s most widely read tabloid), and was similar to the trademark no. 138956 shown alongside. She considers that Internet surfers reaching the site would immediately identify it with Ynet of Yediot Achronot.
From the evidence before her, the Adjudicator concluded that Israeli consumers would know that Ynet and related portals provide internet content and not physical goods and she was not convinced that someone wishing to purchase something from a bricks and mortar Big Deal shop would surf the net, find the Ynet website and mistakenly conclude that the site was related to the Big Deal stores which had not shown that they owned any sort of website. She felt that the opposite is true as well: noone familiar with the portal would assume that the shop was related.
The Adjudicator was impressed with testimony from Ynet that they invested in search engine optimization and other means to raise their internet profile and did not attempt to capitalize on the Opposer’s reputation.
The Adjudicator felt that the Applicant had already developed a reputation for their mark. This was born out by a survey that the Opposer considered as lacking objectivity but which the adjudicator nevertheless found persuasive despite some evidence that the Hareidi community also associated the term BIG DEAL with the chain of stores. Allegations that Ynet had selected their mark in bad faith to trade on the reputation of the Big Deal chain were dismissed, with the Adjudicator accepting arguments that the Applicant was unaware of the Big Deal chain, which was not considered as being a well-known mark.
In conclusion, the Israeli public are not likely to confuse the two service provides and so the Applicant’s mark does not contravene Section 11(9) of the Law. As an aside, when reviewing the various stylized marks of Opposer, none are considered as confusingly similar to the Applicant’s.
Is there evidence of confusion?
Despite concluding that there wa little likelihood of confusion, it is necessary to consider the Opposer’s allegations that many customers were actually confused in practice.
The Opposer claimed that customers wanting the Applicant’s services turned to the Opposer. As evidence of this claim, the Opposer submitted Affidavits of the franchise owners and copies of complaints received at their main office. The Opposers alleged that this evidence of actual confusion should prohibit registration of any mark including the words big deal.
Ms Yaara Shoshani Caspi ruled that evidence of actual confusion has to be carefully considered with regards to its scale, how commonplace it is and its ramifications. She considered that the evidence submitted did not indicate that consumers were confused between the two service providers in the manner that the Law intended. She explained this by noting that the store owners had no direct knowledge but were quoting sales people so the evidence was hearsay. Apart from this, she felt that the confusion was one made by Israel’s telephone services misdirecting calls. This isn’t confusion but rather consumer dissatisfaction. Quoting Kerly’s Law of Trade Marks and Trade Names 792 (15th ed., 2011):
“Nevertheless, if one or more cases of actual deception are made out to the satisfaction of the court, this will, of course afford very strong evidence that the resemblance between the marks in question is so close as to be likely to deceive. However, the deception proved must be of the kind relevant to infringement or passing of; mere “administrative” confusion such as misdirected post and other types of administrative inconvenience will not assist.”
That customers reach the wrong company does not mean that they are confused which entity they purchased goods from. This is administrative error and not confusion and the claim of confusion is to be rejected.
As to Section 11(5) that prohibits registration of a mark which is or may be injurious to public policy or morality; the adjudicator cited previous deputy commissioner Noah Shalev Smulevezh in Opposition 146483 Farmabadan vs. BSN Medical to the effect that this ground for prohibiting a registration was to be used in rare and extreme cases only.
In conclusion, Ms Yaara Shoshani Caspi did not consider the competitor’s mark as being a well-known mark in the sense of the Law. Nor did she consider that there was evidence of confusion or a likelihood of confusion, and has ruled that the marks may coexist. She awarded costs of 17000 Shekels against the Opposer.
This is a somewhat arduous, detailed decision that sometimes considers the Opposer’s word mark without stylizing, as registered and maintained, and sometimes considers their various logos.
When applying the visual test of the five points of the triple test for some reason – and I suspect that it is because it goes contrary to the conclusion that she wants to reach – the Adjudicator fails to note that the word Big and Deal, which she gives little weight to, do rather dominate the logo.
With regards to the sound of the mark, the Adjudicator notes that the words in small are not in the word mark but seems to fail to notice that the words Big and Deal are the ones that would be uttered. I think that this is a classic example of a decision where the adjudicator decided on the bottom line and then retroactively jumped through the appropriate hoops to reach that point.
The Adjudicator decided that the red circle Y and grey net that are very small features of the Applicant’s logo were significant. She notes that these are part of Ynet’s registered trademark. Here’s the thing. Ynet’s registration number 138956 issued due to the disclaimer: Registration of this mark shall give no right to the exclusive use of the letter Y and the word NET, but in the combination of the mark.
In other words, the Patent Office has already recognized that these are not distinctive. They were only recognized as a trademark because of the Hebrew words which are the name of the newspaper.
I concur with the Adjudicator that there is actually no likelihood of confusion since no-one wandering around a Big Deal store would associate it with Ynet’s Big Deal portal and no-one surfing YNet’s Big Deal portal would see a connection with a Big Deal store. This is because the goods are very different and the costs typically differ by an order of magnitude. In other words, the goods and distribution channels are sufficiently different that noone would be confused despite the words being the same.In such a situation, it seems to me that the marks can co-exist with limitations to prevent either party spilling over into the domain of the other. The chain of stores should be forbidden from using the black and turquoise colours or the specific font, and the portal should be restricted to the logo and should be forced to disclaim the words themselves.
There is generally a problem in allowing an internet entity to take over the name of another that has physical outlets since over time, many businesses do more sales over the internet and less through high street stores.
The administrative confusion resulting from operators misdirecting customer inquiries and people looking up one service in the business directories and reaching the wrong company is, to my mind, the type of confusion that arises from the companies having the same name. The Big Deal chain could accuse a company like Ynet using the bigdeal.co.il as cybersquatting. The fact that to date, the Big Deal chain does not have a website does not imply that they should be prohibited from going on-line.
An issued word mark should give the client an outright monopoly for marketing the goods covered in the class. This is the fundamental difference between word marks and logos. the Trademark Office no longer lists disclaimers to rights in the words, but once one disclaims Big AND Deal as a phrase, there is no longer a mark. In my opinion, the word big is laudatory. The word deal is generic. The phrase Big Deal is also fairly generic. I don’t think that the Israel Patent Office should have issued a word mark to the Opposer, but should have limited them to a graphic mark including the words with disclaimers of the words themselves. Had they done so, the Opposers would not have been so flexible with their logos and would have acquired distinctiveness for their specific logo. Then it would have been fairly clear to both parties that there is room for the two businesses to coexist – one enterprise selling cheap goods at bargain prices from high street stores, and the other selling more expensive goods at a discount from their Internet portal.
I suspect that the customers of one ‘big deal’ store were unaware that other stores with the same name and a different logo were under common ownership. I am certain that they do not think that Ynet is operating the stores. The stores never claimed that people went in asking to see the goods advertised on the website or to pick up goods purchased over the Internet.
Had the patent office made a better call with regards to the Big Deal registration of the Opposer, and not awarded a monopoly for the words themselves, it would have saved a very time-consuming and expensive opposition that was, frankly, fairly pointless. It would have saved Patent Office resources. Instead, the Israel Patent Office awarded monopolistic rights to the store owners and then informed them of a soon to issue mark that they might wish to oppose and presumably did this via the attorney of record who was only too happy to fight this protracted and rather pointless battle. That said, I expect the parties that handled this episode to disagree with my heresy. Possibly, had I been representing one of the companies, I would think differently myself.