Frankenstein’s Monster

265232.pngIt sometimes happens that a second applicant files a similar trademark application to a previously filed mark that is pending. in such cases, a competing marks proceeding is initiated. the first to file gets some credit for so doing, but the main issue in determining which mark goes on for examination is the amount of usage by the two parties and good faith, or rather bad faith.

If one party is guilty of inequitable behaviour, their application will almost certainly be stayed. Where there are genuine independent filings of two applications for the same or very similar mark by different applicants, such that the second mark is filed before the first one is registered and they are co-pending, then the more widely used, better known and more intensively advertised mark proceeds to examination, and only once this mark is allowed or canceled, does the second mark  proceed to examination, where, in all likelihood, the registration of the first to be examined mark will prevent the registration of the second mark.

frankensteinIP Factor was approached by Best Foods Ltd. to file the logo shown above as a trademark application in classes 29 and 30. An application was filed and received the Application Number  IL TM 265232.

Prior to this being allowed, a second applicant, a Mr Doron Frankenstein filed Israel TM Application 261955 for the identical mark in the identical classes and so, on 10 May 2015, a competing marks proceeding was initiated as per Section 29 of the Ordinance.

On 4 November 2015, the parties were given three months to file their evidence, and were informed that failure to do so would result in their application being considered withdrawn and their application canceled as per regulations 24 and 25.

Best Foods Ltd cooperated with us and we filed their evidence. However Mr Doron Frankenstein did not file evidence and on 1 January 2017, the Trademark Department of the Israel Patent Office gave his attorneys were given seven days notice to file their evidence or their application would be deemed withdrawn.

Essentially Regulation 22 provides a three-month period for providing evidence, and authorized the Commissioner to cancel the application if no evidence is filed, or to grant an extension if reasonable to do so. Regulation 24(b) states that if the conditions of Regulation 22 are not met, the Application is considered as canceled, and the Applicant is informed accordingly.

The period for providing evidence was 14 February 2016 which is long past, so Israel TM Application 261955 to Frankenstein is considered withdrawn, and costs of 2000 Shekels are awarded to Best Foods Ltd. Application Number  IL TM 265232 was examined and has now been allowed.

COMMENT
It seems that Mr Frankenstein was a distribution agent for Best Buy Ltd. It could have been interesting to see who would have prevailed in a competing marks proceeding in such a case, i.e. whether the distributing agent may be entitled to rights in a mark registered locally. However, in this instance, since no evidence was filed, the substantive issues were not addressed.

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