White Beer brewed by Different Monks Not Confusingly Similar

benediktineThe Bitburger Braugruppe GmbH applied for Israel Trademark No. 270167 for beer and non-alcoholic beverages in classes 32 and for education and catering services in class 43. The mark includes the words Benediktiner Weissbier and a picture of a Benedictine monk.

FranciscanBefore the mark was examined, Spaten-Franziskaner-Bräu GmbH applied for Israel Trademark No. 273567 for beer and non-alcoholic beverages in classes 32. The mark includes the words Franziskaner Weissbier and a picture of a Franciscan monk.

The Israel Trademark Department considered the marks as being confusingly similar and instituted a competing marks proceeding under Section 29 of the Trademark Ordinance.

Both sides presented their evidence as to who should prevail, but before a date was fixed for a hearing, they hammered out a coexistence agreement and agreed on steps to be taken to minimize the likelihood of the public being confused.

The Deputy Commissioner, Ms Jacqueline Bracha considered that the agreement was acceptable and the two trademarks could coexist.

The Benedictine beer (not to be confused with the liqueur that was a favorite tipple of the last Lubavicher Rebbe) is brewed in a brewery founded in 1609 and has a special recipe used by the monks. Since introduced into Israel in 2012, six million shekels has been spent on advertising and hundreds of thousands of liters were sold each year.

The Franciscan brewery claims to date back to the 14th century and that its label was designed in Munich in 1935. They have a registered trademark in Israel from 1936, and the applied for trademark has been used since 2008 for hundreds of thousands of liters.

Section 30 of the Trademark Ordinance allows for coexistence of marks for the same or similar goods where the Commissioner considers that marks are applied for in good faith.  Since the marks have coexisted for five years in Israel (and are known worldwide) and there is no grounds to conclude that one side or the other is trying to benefit from the competitor’s reputation.

The names sound very different when pronounced and the images of the monks are well established for beers.

The Deputy Commissioner then related to dove cosmetics and to the biosensor ruling and concluded that there was no likelihood of confusion.

Coexistence of the two marks is allowed.

COMMENT

This is a little like the joke about the Jew who was beaten up for sinking the Titanic… iceberg, Goldberg, what’s the difference?

Anyone with any sensitivity to monk habits would easily differentiate between Benediktine and Franciscan monks. Benedictine, being black friars would not be seen dead in brown habits. Franciscans, eschewing wealth, wear habits of peasant fabric, and being capucians, have distinctive hoods on their habits.

Perhaps more significantly, images of barley are generic for beer, and the term weissbier just means pale ale, or lager. Since beer has been brewed by monks for centuries, the image of a monk or someone holding a tankard is hardly distinctive. Even the most inebriated would realize that all the above simply indicate beer, and the it is specifically the terms Franziskaner and Benediktiner that indicate the flavour. Those unable to tell the difference would probably not care what they are drinking anyway.

Because of shipping costs, improrted beer from Germany is relatively expensive and these beers are considered as premium brands. the volume of sales is similar in each case and though adequate to demonstrate that they are established locally, their combined market sector is only a small fraction of beer sales. The Arab population does not drink beer at all, and those willing and able to purchase these lagers are generally well educated and discerning. Coexistence is a reasonable outcome in the circumstances. Furthermore, since the parties proposed coexistence, it is unlikely that anyone will appeal this decision.

 

 

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