A Storm in a Coffee Cup

This ruling relates to competing rights of different relatives to register and use trademarks for a family business that eventually split up. The marks were registered by a cousin living in Ramallah, and cousins living in East Jerusalem applied to have the marks cancelled on various grounds including passing off, misleading marks, inequitable behavior and lack of use.

234876 LOGOChain Stores of Izhiman Coffee Company own two trademarks: Israel Trademark No. 234876 for the logo shown alongside, and 234877 for the Arabic and English word mark
بن ازحيمان IZHIMAN’S COFFEE.

Maazen and Shapik Izhimian applied to have the mark’s canceled under Section 39 of the Trademark Ordinance 1972, and further under Section 41 for lack of use.

The mark was first applied for by Muhammad Musa H’alad Izhiman in January 2011, and after examination, was registered on 2 May 2012 for “coffee and coffee spices in class 30.” On 27 February 2014, the mark was assigned to Chain Stores of Izhiman Coffee Company, a Palestinian Company based in Ramallah that was owned by Muhammad Musa H’alad Izhiman and his two sons Kassam and Nasser.

On 5 March 2014, the brothers Maazen and Shapik Izhimian who own a Jerusalem based business in Bet HaBad Street, for marketing and trading in coffee and spices under the name “Izhiman’s Coffee” and who are cousins of Muhammad, submitted a cancellation request. In July 2014, the owners Chain Stores of Izhiman Coffee Company submitted their response.

The Background

EnjoyMuhammad, his three brothers and the Applicants for cancellation are all members of the same clan, that were involved in the family business established by Musa, Muhammad’s father, together with Mahmud, the father of Maazen and Shapik in the 1980s. The company had three addresses, the Ramallah address, the Jerusalem address now run by Maazen and Shapik, and a third branch in Abu Dis.

In 1994, Muhammad fell out with his brothers and nephews and received sole ownership of the Ramallah store. His three brothers and the nephews shared the Abu Dis and the Bet HaBad Jerusalem shops and opened a further outlet themselves in Ramallah. In 2000 the applicants for cancellation and Muhammad’s three brothers opened a fourth branch in Salah Shabati Salahadin Street in East Jerusalem. In 2008, these partners ceased to cooperate, and Maazen and Shapik were left with the Jerusalem Store in Bet HaBad Street.

love.jpgMaazen and Shapik submitted an affidavit written by Maazen and a second one from Riyadh Ghazi Halaq, the owner of a coffee shop near the Bet HaBad address that buys his raw coffee from them. The mark owners responded with an Affidavit by Nasser Muhammad Musa Izhiman, Partner and authorized signatory. At the end of September 2016, the Adjudicator of IP, Ms Yaara Shoshani Caspi held a hearing and the witnesses were cross-examined.

The Statement of Case of the Applicants for Cancellation

The Applicants for Cancellation claim to have used the tray with finjan logo with the word’s IZHIMAN’S COFFEE since 1980, and that they had a strong reputation with the population of East Jerusalem and its surroundings. They claimed that their father and uncle drew the logo in the 1950s and they had inherited the mark and the associated rights from their father Mahmud Izhiman.

finjanThe Applicants for Cancellation allege that contrary to Section 8 of the Trademark Ordinance, the marks lack distinctiveness in that they are identical to the marks that they themselves have been using. Furthermore, the Applicants for cancellation claim that the application was filed in bad faith for defensive purposes only, with the intent of damaging the Cancellation Applicants’ rights to continue use the marks. They claimed that when he filed his applications, Muhammad knew fully well about the ongoing usage of the marks by the cancellation applicant, and that he knowingly concealed this information from the Registrar of Trademarks. He then transferred the ownership to the current owners in a further act of bad faith.

The Applicants for Cancellation claim that the their marks are well-known and identified with them, and allowing the marks to remain in the register would create unfair competition and would mislead the public, contrary to Sections 11(6) and 11(13) of the Ordinance. They claim that their clientele is the population of East Jerusalem who identify their goods by these marks stamped on their coffee products.

Furthermore, the Applicants for Cancellation claim that after the business collaboration broke down in 1994 and in the inheritance arrangements, there was an agreement between Muhammad, the Applicants and the rest of their family to the effect that they give up on all rights to the Ramallah store. According to the Applicants for cancellation, the agreement ONLY related to that store, and Muhammad gave up rights to the business conducted at the other addresses.

The Applicants for Cancellation allege that Nasser’s testimony is hearsay, and cannot provide evidence regarding the background to the agreement, since unlike his father Muhammad, he was not present at the time.

The Applicants for Cancellation allege that the marks owners never intended using the marks in good faith and never used them in good faith contrary to Section 41 of the Trademark Ordinance. They claim that the marks owners do not do business in Israel and were boycotting all Israeli Produce. They alleged that all stores of the mark holders are in the Palestinian Authority and that the mark holders have no business in Jerusalem. They further allege that all the advertising by the marks holders was aimed at the Palestinian population and not at the Israeli population.

As a second course of action, the Applicants for Cancellation have asked that Mark 263714 in their name be registered alongside the registered marks that they were applying to be cancelled, should their request for cancellation be unsuccessful.

The Mark Owners’ Statement of Case

On behalf of the mark owners it was alleged that there is no argument that the parties have familial connections. However, the Applicants for Cancellation had failed to establish that they had sole rights to the mark in Israel.

The registered owners emphasized that in July 1998 Muhammad had applied for trademarks that were similar to those now registered and in December 1999, Israel Trademark No. 120722 was registered in his name. There was certainly no arrangement of who had what rights prior to this registration.

165652The mark owners claim that the Applicants for Cancellation and Muhammad’s three brothers applied for Israel Trademark No. 165652 in July 2004. This application was similar to the registered marks. It was rejected by the trademark department due to its similarity to TM 120722, previously registered by Muhammad. That application was abandoned, without any attempt to challenge the validity of the TM 120722 mark which is indicative of the lack of real interest by the challengers whose tardiness in now challenging the validity of the mark is noteworthy.

The mark owners appended a document in Arabic that was dated 3 October 1994 and titled “Notice as Affidavit. They claimed that in the framework of this document, the challengers gave up all rights to the Ramallah business and agreed that it was the sole property of Muhammad, but the document does not relate to the East Jerusalem addresses at all, or to any division of rights regarding the usage of the mark. Furthermore, the mark owners claim that Maazan was a partner in opening two further shops in Ramallah. They allege that this strengthens the ir claim that the agreement only related to one shop in Ramallah as stated above.

The mark owners claim that they invested heavily in promoting their goods in Israel under the registered mark. This investment included Arab radio stations that can be picked up in Israel, newspapers that are written and distributed in Israel, TV channels that are received in Israel, road signs, etc.  Furthermore, the marks holders established an Israeli distribution company “Muhammad Izhiman and Partners, Ltd. that sells its goods throughout Israel. They allege that through the commercial success of their products, the Israeli public has learned to recognize their products and to identify them with the company.

The mark owners argue that the Applicants for Cancellation’s accusations of their acting in bad faith should be rejected: Their allegations that the registrants participated in a boycott of Israel was not true and was an unjustified widening of their statement of case that first appeared in their summations. They noted that unlike patent law, the Israel Trademark Ordinance does not require them to inform the patent office regarding other applicants that use the identical or similar mark.

The correct time to allege lack of use was after three years from registration had passed. As this was not yet the case, this claim should be thrown out.

RULING

The proceedings for the cancellation of a mark is covered by Sections 38a and 39 of the Trademark Ordinance.

Section 38a states that:

Subject to the orders of the Ordinance; anyone who is damaged by a certain fact not being reflected in the register, or being deleted, or not being registered without due cause, of remaining of record without legal basis or having an error or other flaw, is entitled to request a correction to the register in the authorized way.

There is no doubt that  the Applicants for Cancellation, as competitors with the registered mark owner, are damaged parties and thus fully entitled to file for the mark to be cancelled – see 941/05 Agudat HaCormim Cooperative of Rishon l”zion and Zichron Yaakov vs. The Vineyard Company, p.d. 71(3).

Section 39 of the Ordinance establishes how cancellation processes should be submitted as follows:

(a) Requests to cancel trademark registrations under Section 38 for all or some goods on the basis that the mark should not have been registered under one of Sections 7 to 11 of the Ordinance or due to the mark creating an unfair trade advantage to the applicant in Israel, should submit their request within 5 years of the trademark certificate issuing under Section 28.

(a1) despite that written in Section (a0), the request for cancellation of a trademark on grounds of inequitable behaviour may be submitted at any time.

Since the request for cancellation was filed within 5 years of the mark issuing, there is no need to establish a lack of inequitable behaviour to rule on the case.

We are dealing with a property right that should not be undermined with impunity. The case law establishes that the registration creates a presumption of validity that the applicants for cancellation have to overcome – See Supreme Court Ruling 144/85 “Klil Non-Ferrous Industries Ltd. vs. Commissioner of Patents, Designs and Trademarks, p.d. 42(1) 309:

The burden of proof that a mark is registerable is on the applicant for registering but the burden of evidence that a mark is not registerable is on the Requester for Cancellation. The fact that a mark is registered is prima facie evidence that it is valid (see Section 64 of the Ordinance), so the applicant for cancellation has the onus of proving to the contrary. This claim by Dr Cheshin is not disputed. But in all cases where the burden of proof is on one party, it passes back and forth as the parties bring evidence that the registration was illegal, and so the presumption of validity is rebuttable (page 318 of the ruling).

The similarity of the registered mark to that requested

To rule on the alleged similarity one applies the so-called triple test. This test is based on thesight and sound of the marks, the type of goods, the distribution channels and the other considerations, and also on the common sense test – see 5454/02 Taam Teva (1988) Tiboli ltd vs. Ambrosia Ltd. 57(22) 438, 453-451 (2003); Appeal 210/65 Bank Igud Israel Ltd. vs. Bank Agudat Israel Ltd and 715/68 Pro Pro Bisuit (Kfar Saba) Ltd. vs. Fromein and Sons Ltd. p.d. 23(2) 43, 1969.

In this instance, there is to argument that the two marks are very similar to identical in that the designs show a tray with a finjan and coffee cups and the words “IZHIMAN’S COFFEE” in English and Arabic. There is also no argument that both parties are using the mark for the same goods (coffee) and are selling to the same market segment. This is not sufficient. To cancel the registered marks, the Applicants for Cancellation have to show that the mark was not registerable under the law based on one of the grounds given in the Ordinance. These are discussed below:

Is the Mark well-known?

The Applicants for cancellation are claiming that the mark is a well-known mark in the meaning used by law, and so should be cancelled as not registerable under Section 11(13). (In essence, they are arguing that this is similar to Chanel or Versace, where despite not having been registered in Israel by the true owners, the later registrations were cancelled since these marks were considered as very well known).

Section 11(13) states:

13) a mark identical to, or misleadingly similar with, a well-known trade mark even if the mark is not registered in respect of goods for which the mark is well known or in respect of goods of the same description;

Section 1 of the Ordinance defines a well-known mark as follows:

“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;
Infringement” means the use by a person not entitled thereto of a registered trade mark, or of a mark resembling such a trade mark, in relation to goods in respect of which the trade mark is registered, or to goods of the same description; (2) of registered trade mark in advertising goods of the class in respect of which the mark is registered of goods of the same description; (3) of a well-known trade mark even if it is not a registered trade mark, or of a mark so similar to it as to be misleading in respect of goods for which the mark is well known or in respect of goods of the same description; (4) of a well known trade mark which is registered, or a mark similar thereto, in respect of goods not of the same trade description, provided that such use could indicate a connection between such goods and the proprietor of the registered trade mark and the proprietor of the registered trade mark might be harmed as a result of such use.

It is noted that Section 1 of the Ordinance states that the notoriety of the mark will be determined by the extent to which the relevant public know the mark, which, according to the Applicants for cancellation, is well-known to the residents of East Jerusalem.

The case-law has developed a number of tests to help determine if a trademark has become well-known in Israel. These are described in 9191/03 Aktiebolag vs. Amsolut Shuz, p.d. 58(6) 869, see also the Opposition against 93261 “Pentax (stylized) S.R.L. Pentax vs. ASAHI KOGAKU KOGYO KABUSHIKI KAISHA, 4 Sept 2003. These tests include the degree of notoriety of the mark, the scale of use and the period of use, the amount of sales and the degree of market penetration, the extent and period of advertising, the degree to which the mark is known, the extent of use, whether it is registered and enforced, the uniqueness and the extent to which it and similar marks are used by third parties (where third-party usage indicates that the mark is not associated with one entity only; a degree of acquired distinctiveness may be better than inherent distinctiveness the type of goods, distribution channels, and the degree to which the reputation of a mark indicates that the goods are of a high quality.

To prove that the mark has a reputation that is identified with them and has, over the years, become a well-known mark amongst the East Jerusalem residents, the Applicants for Cancellation submitted an affidavit signed by Maazan and one by Riadh Halak.

The Adjudicator of IP, Ms Yaara Shoshani-Caspi, does not think that the Applicants for cancellation have established that the mark is well-known and associated with them by East Jerusalem residents. She considers the amount of evidence submitted as insignificant and does not show evidence, for example, that the Applicants for Cancellation extended effort in advertising or marketing the mark. There is no evidence of the extent of sales or of significant market penetration. Furthermore, the Applicants for cancellation haven’t even established multi-year usage of the mark, although usage from 1980 is claimed.  Since the target population is a small, well-defined local one, the lack of evidence of penetration even of this market is noteworthy.

It will be noted that to establish the mark as well-known with them, there is a need to establish a connection between the Applicant for Cancellation and the mark to be cancelled by showing evidence of advertising and the like, and this is wholly missing.

The Applicants for Cancellation have failed to demonstrate that the mark is well-known and valued by the citizens of East Jerusalem. Therefore, Mr Shoshani Caspi rules that the mark is NOT a well-known one in the meaning of Section 1 of the Ordinance. This makes ruling on Section 11(13) moot.

Unjust Competition and Misleading the Public

The allegations by the Applicants for Cancellation of Unjust Competition and Misleading the Public are based on Sections 11(6) and 12 of the Ordinance. Section 11(6) states:

6) a mark likely to deceive the public, a mark which contains a false indication of origin, and marks which encourages unfair trade competition;

Section 12 states:

The Registrar may refuse an application for registration of a trade mark identical with or resembling the name or business name of another person, or containing a name identical or resembling as aforesaid, if the mark is likely to deceive the public or to cause unfair competition.

Amir Friedman, in his book “Trademarks, Legislation, Rulings, And Comparative Law” published by Perlstein-Ginnosar, Second Edition 2005, considers Section 11(6) of the law and states “the article relates to unregistered marks and relates to passing off which requires firstly establishing a reputation as a necessary precondition, and only then can one consider if there is a danger of misleading with respect to the reputation that the original mark provides. See also Seligsohn “trademarks and Similar Laws, 1973 on page 31.

In his ruling concerning Israel Trademark No 127648 “Free” (stylized) Gotex Models Ltd. vs. Free, paragraph 18, (see patent office website – 4 January 2005), the then Adjudicator of IP Israel Axelrod relates to the common element for non-registerability under Sections 11(6) and 12, and that is proof of reputation in a mark as the basis for opposing an application. See also the decision regarding Israel trademark nos 136631 and 136632 Push “HaMashbit Fashion Stores ltd vs Push line Ltd (31 October 2004), paragraph 7:

The commonality of these grounds for cancellation is that they are based on a third-party, who is not the owner of the registered mark, having a reputation in the mark or in a similar one, which is likely to lead to misleading the relevant public and even to unfair competition, and the thing is clear: the danger of misleading or unfair competition is based on the existence of a reputation and without such a reputation, there is no likelihood of misleading.

So to prove that a mark should not have been registered under Section 11(6) or section 12, the Applicant for Cancellation has to establish that they have a reputation in the mark. In other words, the Applicants for Cancellation have to prove that the mark is identified with them by the relevant public, and not with the registered owner.

As stated above, Ms Shoshani Caspi did not consider that the mark is well-known and identified with the Applicants, since the conditions of the definition of a well known mark under Section 1 and the case-law have not been met. The weight of evidence provided is not enough to establish any sort of reputation, and failing to do so makes further analysis of unfair competition or misleading, moot.

Trademarks Including a Family Name

A further reason given by the Applicants for cancellation was that the mark was their family name. This is apparently based on section 11(11) of the ordinance which states that:

  1. The following marks are not eligible for registration:

(11) a mark whose ordinary significance is geographical or a surname, unless represented in a special manner or unless heaving a distinctive character within the meaning of section 8 (b) or 9;

Israel Trademark No. 234876 is a stylized mark as stated previously. Section 11(11) requires a surname to be stylized in a “singular fashion” that is different from other marks that are based on family names, such as 234877 “Izhiman’s Coffee”. Ms Shoshani Caspi considers that there is a problem registering a family name per se as a trademark but any additional word or stylization is generally sufficient to prevent misleading. See
McCarthy on Trademarks and Unfair Competition (4th ed.) §13:11 pages 13-29:

“The junior user is often required to modify to some extent his present confusing usage of his name… Usual types of modifications ordered include:

(2) A change in the style, size or color of lettering of the personal name.

(3) The inclusion of some clarifying matter.”

The footnotes give various examples of surnames that were registered in the US as part of trademarks including the type of goods in the mark:

“Hunt Potato Chip Co. v. Hunt, 340 Mass 371, 164 N.E.2d 335, 124 U.S.P.Q. 476 (1960) (required defendant’s name be so clearly differentiated that deception is eliminated); Howards Clothes, Inc. v. Howards Clothes Corp., 236 Minn. 291, 52 N.W.2d 753, 93 U.S.P.Q. 107 (1952) (required defendant to feature prominently the words “of New York” after the name “Howards”); S. C. Johnson & Son, Inc. v. Johnson, 116 F.2d 427, 48 U.S.P.Q. 82 (2d Cir. 1940) (defendant enjoined from using his name Johnson except in combination with the word “Cleaner” and always with the explanation: “Made by the Johnson Products Co., Buffalo, N.Y.,” in type equally large and conspicuous – injunction set forth in opinion); Ziegfeld v. Conklin, 50 N.Y.S.2d 906 (Sup. Ct. 1944) (injunction against use of ZIEGFELD in conjunction with “Follies”); Moon Bros., Inc. v. Moon, 300 Mich. 150, 1 N.W.2d 488, 52 U.S.P.Q. 264 (1942) (use of MOON BROS. allowed only in conjunction with the word “furniture” or “upholstering”)

The Adjudicator ruled that the addition of the word coffee to the name IZHIMAN’S made it clear that the goods related to coffee in both the word mark and the stylized logo, and this prevents confusion provided by the name of the family.

Here the Adjudicator notes that allowing the mark to remain on the books does NOT prevent the Applicants for cancellation from themselves using the term name IZHIMAN’S COFFEE, since Section 47 states that:

Registration under this Ordinance shall not prevent any genuine use by a person of his own name or the name of his business or the geographic of his place of business, name of the place of business or the name of the place of business of any of his predecessors in business or the use by any person of any genuine description of quality of his goods.

Consequently, Applicants for Cancellations allegations under Section 11(11) are rejected.

Allegations that the Registration was in Bad Faith

The Applicants for Cancellations alleged that the registration was made in bad faith under Sections 39(1a) of the ordinance. As established in Klil, the burden of proof lies with the Applicant for cancellation. The standard is rather high since it implies that the registered owners acted wrongly before the patent office (see Israel TM 249443 Institute of Internal Auditors vs. The Israel Bar for Internal Auditors, 30 November 2015.)

The Applicants for Cancellation claim that there were four legal documents signed in October 1994 wherein the parties divvied up the family business. These documents were submitted in evidence by the parties as indicating their respective rights. The Applicants received the sole ownership of the Jerusalem store and the Muhammad received the sole right to manage the Ramallah store. The parties disagree as to the correct interpretation of these documents. The mark owners claim that these documents only relate to the Ramallah store and do not address the rights to the other stores or to the rest of the family business.

After carefully reviewing these documents and listening to the cross-examinations it is clear that the applicants for cancellation did not prove their case that these documents created a division of the business that prevented the mark owners from registering the trademarks since the documents don’t mention the other stores or create any geographical division or relate to the business in Jerusalem.

Further Maazan admitted under cross-examination that he had partnered in opening another store in Ramallah after 1994. The Applicants for cancellation alleged that this shop had opened in a different name and that the agreement didn’t cover this shop. Nevertheless, this behavior by the Applicants for cancellation strengthened the Adjudicator’s conclusion that the agreements related to the Ramallah shop only.

Since the documents were clear and do not indicate that the parties intended to agree to anything beyond the Ramallah store, it is superfluous to relate to whether Nasser’s testimony is hearsay.

The Applicants for Cancellation alleged that Muhammad (the original applicant) should have reported to the Israel Trademark Office that the Applicants for cancellation were using the marks for the shop in Bet HaBad Street. The mark owners claim that they had no obligation to disclose similar or identical usage by competitors. The mark owners also noted that they had previously registered Israel TM no. 120722, and the Applicants for cancellation had not challenged that mark either.

As a general rule, an applicant for a trademark is not required to inform the Trademark Office about competitor’s usage of the mark – see the cancellation proceedings regarding Israel Trademark No. 69909 BAMBINO.

The existence of additional users of  a trademark is a very common occurrence. Sometimes the usage by others is the impetus for the applicant to file his application to anchor his claim so that on registration he can take action against others that infringe his rights in the mark…Obligating the applicant to provide details of other users at the time of application is meaningless since at the time of application, the examiners and registrar lack the tools and information to weigh up the respective rights of the various users, including the applicant (paragraph 29 of the decision).

In this regard, one can consider the obligation or otherwise of an applicant to inform the Examiner of of similar or identical registered marks (if he knows about them). See the 120406 and 118643 competing mark rulings and the 118644 cancellation proceeding (Fischer rulings).

To relate to the claims of the parties, this is the 120722 mark registered by Muhammad on 5 December 1999:

120722.png

On 14 July 2003, the Applicants for cancellation and Muhammad’s three brothers 165652submitted Israel TM Application No. 165652 as shown:

This application was abandoned on 31 October 2004, apparently due to the Examiner objecting to it being similar to the 120722 mark.

The 120722 mark was itself cancelled in January 2006 for lack of payment of maintenance fees. Then the current marks were applied for in January 2011 and the requests for cancellation were filed in March 2014.

After a careful review of the applications it is clear that the Applicants for cancellation knew about the 120722 mark that was cited against them but did not challenge it. In the years that past until March 2014, when the 263714 mark was filed, the Applicants for cancellation did not attempt to protect their rights. They did not oppose the 120722 mark or try to cancel it, did not try to defend their 165652 registration against the 120722 rejection. They sat with their arms folded and did nothing which indicates that they were not concerned to have one mark or another registered in their name, despite knowing that Muhammad was actively registering marks in his name. (Maazan’s testimony that he did not know about any of the applications is not credible since his name appears as an Applicant for the 165652 mark). This lack of interest is clear from what the Adjudicator considers was a tardiness in filing the present cancellation proceedings.

In the circumstances, the Adjudicator  does not consider that Muhammad was obliged to inform the patent office of conflicting users; where those users did little themselves and as established in Fischer, there is no duty of disclosure. Consequently the Applicants claim of inequitable behavior in not disclosing the information is rejected.

Cancellation of the mark through lack of use.

The grounds for canceling a mark through lack of use are given in Section 41(a) of the law as below:

  1. [a]Without prejudice to the generality of the provision of sections 38 to 40, application for the cancellation of the Registration of a trade markregarding 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.

Cancellation requires the Commissioner to be convinced that the owner of a mark has not had any bona fide use within the three years prior to cancellation request.

The Applicants for cancellation claim that the mark was not registered to protect Muhammad’s usage but to prevent them from using the mark and that Muhammad did not intend to use the mark in Israel.

It is true that the case-law establishes that defensive registrations are to be cancelled. (see 82207 Cadbury Ltd “TIME OUT” vs. Elite Industries ltd. 23 Dec 2003 and the 68299 and 68304 HUGO BOSS Trademark Management GmbH & Co KG vs Virginia Carolina Corporation, Inc. 7 December 2010. However, as stated previously, the Ordinance provides for cancellation of a mark following lack of use, only once three years has passed. See Dr Noam’s ruling re TM 138834 Migador lrd. Vs. Boris Gail and Oleg Koldobeslky 16 May 2005.

A person’s right to a trademark is conditional on it being used. Consequently, a mark that is not in use for the class of goods that it is registered for over the three-year period prior to a cancellation request being filed, will be cancelled; unless there are extenuating circumstances that  prevent the usage. The wording of the Law establishes that the relevant period is three years from the date of filing a request for cancellation and not from some subsequent date, and so, this claim cannot be used unless three years has passed.

In this instance, the mark was registered in May 2012 and the cancellation request was filed only on 5 March 2014; and at that stage it was impossible to establish a lack of post registration usage over the previous three years since less than two years had passed since the mark was registered.

Thus the Section 41 challenge on grounds of lack of use is thrown out. This renders weighing up whether or not there has been bona fide use unnecessary. However, this does not prevent the Applicants for cancellation from attempting to cancel the marks in a further application so long as it is filed three years after the mark was registered.

CONCLUSION

The applicants for cancellation have failed to prove that the marks should be cancelled on any of the grounds raised. Their request to register the mark themselves does not belong in the cancellation proceeding and the Applicants for cancellation seem to have abandoned this anyway. In the circumstances and after weighing the evidence, costs of 8000 NIS are ruled in favour of Muhammad.

COMMENT

I found this ruling pedestrian and long-winded. I consumed several coffees whilst wading through it. Do we really need to go into the triple test where the marks are identical? There is sometimes a need to cut to the chase.

cafe hagWe note that in Europe, after the Second World War a Mr Van Zuylan obtained the rights to the Café Hag trademark from in the Benelux region, which was appropriated as enemy property. With the establishment of the European Community Café Hag was available from Germany and from Van Zuylan creating all sorts of confusion.

I am not sure that a mark that is well-known among residents of a few suburbs is a well-known mark under the Trademark Ordinance. A long-established coffee shop may assume a notoriety in its immediate neighbourhood, but that does not necessarily give it blocking rights in a whole country.

Coffee anan.jpgkofi-annan-001It seems to me that former Secretary General of the UN, Kofi Anan would be a useful person to arbitrate this family feud that could become a threat to stability in the Middle East.

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