Panama Jack Inc. submitted a cancellation request against registered Israel TM No. 79826 for a Panama Jack pendant which was registered back in 1994 in group 25 by Grupp Internacional SA.
Section 41(a) of the 1972 Tradeamrk Ordinance states that:
Any interested party may request cancellation of a trademark on the grounds that there was never a good faith intention of using the mark and that the mark was not used in good faith within the three year period prior to the cancellation request being submitted.
Registered trademarks are considered property rights in all respects and should not be undermined without due consideration. The requester for cancellation was to show that the mark was not in use. See 476/82 Orloged.vs. Commissioner of Patents p.d. 39 (2) 148. The burden of evidence then bounces back and forth between the parties, and if the challenger provides prima facie evidence that shows that a mark should not be cancelled, the burden of proof then falls on the mark owner to dispute the evidence brought by the challenger and to supply evidence that there was, in fact, use of the mark. Where there remains a doubt, this works for the benefit of the mark owner, and the mark will not be cancelled. BAGATZ 296/89 Philip Morris vs. Moorgate Tobacco Co Ltd. p.d. 41 (1) 485.
Regulation 70 of the 1940 Trademark Regulations state that:
A request to correct a registration or to cancel a registered mark from the register will detail the facts and the requested correction and will be submitted in two copies; one to the Registrar and the other to the owner of the mark.
In this instance no one denies that the mark owner received a copy of the cancellation request.
Section 71 of the regulations state the case should continue as follows:
With submission of a cancellation request with copy to the registered owner, the matter proceeds in accordance with regulations 37 to 46 (opposition regulations) with the appropriate changes.
The mark owner has two months, i.e. until 30 January 2017 to respond. In this instance, he failed to do so and also failed to request an extension of time. In so doing, Section 71(a)a applies:
If the owner of a mark does not submit a response under Sefction 70 within two months, the Commissioner will give the supplicant two months to state their case.
In this instance, as the mark owner has failed to respond, the Supplicant for cancellation has two months to submit their evidence.
Re 79826 Grupp Internacional vs. Panama Jack, Intermediate Ruling Shoshana Yaara Caspi, 13 March 2017