Balboa Apps attempted to register Israel Trademark Application Number 271170 for SEQUOIA in class 9 covering Computer software for Internet search and browsing, e-mail, electronic messaging, and application development; computer operating system software and computers. The mark is a stylized word mark in capital letters in a serif font as shown along side.
The Examiner refused the mark on the basis of Section 11(9) of the Trademark Ordinance 1972 due to its similarity to Israel Trademark No. 227696 for SEQUOIA CAPITAL THE OWNER’S CODE and to Israel Trademark No. 227697 for SEQUOIA CAPITAL THE FOUNDER’S CODE both in class 42 and covering technology consultation and research in the fields of computer hardware, computer software, networking, telecommunications, e-commerce, content distribution, financial services, health care, energy, clean technology and outsourcing; all included in class 42.
A separate issue was a Section 29 (competing marks proceeding) with reference to Israel Trademark Numbers 271338 for Sequoia Capital and 271339 for Sequoia in classes 35, 36, 38, 41 and 42.
On 2 January 2017, the Applicant responded to the Office Action by noting that the requested mark was successfully registered in many other jurisdictions; that the application was for a different class than that of the cited marks and the services and goods are likewise different, and the difference in the marks are clear and self-evident and not similar enough to cause confusion. These arguments were not considered persuasive by the Examiner and Applicant’s representative requested a hearing before the Commissioner, which was held on 16 July 2017.
In this regard, the Applicant requested under paragraph 8 of Circular 013/2012 to leave the competing marks issue under Section 29 (competing marks) until the Section 11(9) (similarity of marks) issue was ruled on.
The Applicant’s mark is the word Sequoia in a serif font, and the registered marks are for SEQUOIA CAPITAL THE OWNER’S CODE and SEQUOIA CAPITAL THE FOUNDER’S CODE in San-serif font. The Applicant’s mark is for computer software under section 9, whereas the registered marks are for consultation regarding computer software and hardware, telecommuniication as and other things in class 42.
Section 11 states that:
- The following marks are not capable of 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 description of goods, or so nearly resembling such a mark as to be calculated to deceive;
Section 2 states:
- Save as otherwise provided, the provisions of this Ordinance which apply to trade marks shall apply mutatis mutandis to service marks, and every reference in this Ordinance to a trade mark or to goods shall be deemed to include a service mark or a service.
Thus before considering the similarity of the marks, and whether the registration of the mark in question could deceive with regards to the registered marks, it is necessary to determine whether the various marks are for goods and services of the same type. If it can be established that the requested goods and services are of a different type, Then even if the marks are otherwise confusingly similar, they can still be registered; see the Hi Tex vs. Hi Tec ruling of 11 August 2005. In this regard, the Applicant claims that they offer different goods and services from the marks owner. Whereas they develop and sell software and are a technological company, the registered mark-owners are is an investment fund that offers financial services. This claim is based on both the mark-owners name and on an Internet search including their website. Consequently, the Applicant does not consider that it and the mark owner are business rivals.
The Commissioner notes that his starting position is that this is an ex-partes hearing wherein the mark owner is not present. Consequently, the hearing has to concentrate on the registered details of registered marks and cannot consider alleged actual use. Support for this position is found in the cancellation ruling of Israel Trademark Number 175594 Tobishi Trading vs. Herman International Industries (Infinity).
The USPTO’s Guide to Examiners, the TMEP edition 2017 §1207.01(a)(iii) states:
“The nature and scope of a party’s goods or services must be determined on the basis of the goods or services recited in the application or registration”
“…If the cited registration describes goods or services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers.”
A similar approach is found in the European Trademark Guidelines for Examination in the Office, Part C, Opposition:
“1.5.2 The relevant scope Comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or
intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).”
Although in Appeal 4116/06 Gateway Inc vs. Paskol Advanced Technologies LTD (20 June 2007, the Supreme Court ruled that although the starting point is that the list of goods identified, the Commissioner should also consider the extent of actual use. However, in contradistinction to the present case, Gateway was an inter-partes hearing where both sides brought evidence and could raise arguments before the Commissioner. The present case being considered this is an ex-partes case In which no evidence has been submitted, and so the Commissioner does not see fit to depart from the basic approach of comparing the details in the registration.
When comparing the details it is noted that amongst other things, the registered mark covers ” technology consultation and research in the fields of computer hardware, computer software, networking, telecommunications, e-commerce, content distribution…” whereas the applied for mark covers ” Computer software for Internet search and browsing, e-mail, electronic messaging, and application development; computer operating system software and computers”. So the question is whether these disparate computer related services are within the same field. It is NOT necessary for there to be an overlap in the list of goods to reach the conclusion that they are in the same category. See Toto Zahav. Also, goods in the same field do not have to be in the same category but goods and services that are substantively similar may be considered as in being in the same field.
The determination that goods are in the same field will be considered on its merits in each case, on a case by case basis and this will also change during the commercial life of the product, technological advances and with reference to marketing and distribution channels. (See for example, paragraph 30, of The Annulment Proceedings Concerning MB Metal vs. Automator Italia SRL, 11 March 1999.
In re MB Metal it was also ruled that to determine whether goods are in the same field or not one has to consider the nature of the goods and their components; the purpose to which the goods are put, the way they are used, the distribution channels, the type of marketing and the degree of competition between the goods in question. The purpose of these tests is to address the issue of whether members of the public with an ordinary level of awareness acting with a regular level of caution would err and be confused between the products of the two sides.
A further test that provides an indication was given in Re Toto Zahav, by which one should consider whether the goods or services are in the same “trade family”, which would lead the public to assume a connection or endorsement between one supplier and another.
In this instance, the list of services covered by the registered marks is very wide and includes consulting with regards to hardware and software, without being limited to a specific application. Advice and consulting is performed as a matter of course when selling software which is in the list of goods of the applied for mark. The services are complimentary, and in many instance consultancy services are provided by the same bodies that develop and/or sell software, to conform the software to the client’s needs. In such instances, the distribution channels of the software and the consultancy is the same, as is the customer. This tips the balance in favour of ruling that the goods and services are from the same family of services and belong to the same field.
Having ruled that the applicant and the registered mark owner sell goods and services in the same field, one has to consider whether the applied for mark is confusingly similar to the registered trademarks. This is achieved using the triple test consisting of:
- the sight and sound of the mark
- the goods and customers and
- everything else of relevance.
To this, the common sense test is added, which has developed into a secondary test. See 261/64 Pro-Pro Biscuit (Kfar Saba) ltd. Vs. Fromein & Sons Ltd, 15 September 1964, and Appeal 5792/99 Communications and Religious Jewish Education Family LTD cs. ES.V.S. Publicity, Marketing and Sales Promotion LTD p.d. 55(3) 933 (Family Magazine).
The sight and sound of the marks test is the central of the three tests. It is conducted by comparing the marks in their entirety, whilst considering the first impression of consumers, and the dominant elements of the marks, since consumers are not expected to analyze subtle differences. See 6658/09 Multilock vs. Rav Bareach Industries LTD, paragraph 9 of Judge Gronis ruling (12 January 2010).
In the present instance, the requested mark is hardly stylized, and it is really a word mark. Similarly the registered marks are word marks. Whereas the applied for mark is only the word Sequoia, the registered marks include other words, i.e. CAPITAL THE OWNER’S CODE or CAPITAL THE FOUNDER’S CODE. The question is whether these additional words are sufficient to ensure that the public are not mislaid as to the source of the goods.
In the case law it is stated that the motif at the beginning of the mark is significant, and often is the dominant and main motif. (See Opposition 169507 Tal Eden Trademark vs. Tnuva, 2 February 2009. However, sometimes it is end of the mark that dominates.
In this instance, the Commissioner concurs with the Examiner . The dominant word is SEQUOIA. This is the word used for branding purposes that gives the existing marks their defining characteristic that allowed them to be registered.
In the Toto Zahav ruling it was stated that not all additional words result in differentiation between marks.
In is possible that a specific additional element, whether word or visual, can provide differentiate between marks and remove the danger of public confusion. However, not all additional elements have that effect. Only dominant additions that have significance that is not secondary or subservient to the main element that is common with other acts will enable them to be registered. The additional element must be sufficient to cancel the perceived similarity between the pending and registered marks, for it to enable coexistence.
In the current instance, the removal of words is the issue. The Commissioner considers that many customers of the registered marks would refer to the service provider as Sequoia for short, and this increases the likelihood of assuming a connection between the existing marks and the pending application, particularly as we have determined that the goods and services are in one and the same family.
As to the type of goods and customers, as stated above, we are dealing with goods and services that are regularly provided by the same supplier. The Applicant has not shown that the customers and distribution channels are different. This leads the Commissioner to conclude that there is a risk of consumers being mislead if the applied for mark is allowed to be registered.
In this regard it is noted that the Applicant assumes the burden of proof to show that a mark should be registered. (See BAGATZ 14/85 Klil Non-Ferrous Metal industries vs. Commissioner of Patents & Trademarks p.d. 42(1) 309, 317, Opposition to 175808 and 175809 Gizeh Raucherberdarf GmbH vs. Cooperative Cigarette Manufacturing Company S.A. – SEKAP S.A. 6 February 2012. As mentioned earlier, the Applicant’s explanation related to the actual use of the mark, rather than to the list of goods and client base of the mark as claimed, and the list of goods and services claimed are complimentary.
As to the everything else test, this includes anything relevant not otherwise related to. In this instance, after considering the Applicant’s claims and noting a lack of evidence, the Commissioner consumes that there is nothing to justify registration in this case, following the application of the first two elements of the triple test. In lack of evidence to the contrary, the conclusion that due to their similarity, there is a likelihood of confusion stands.
It is stressed that the Applicant claims that the registration of the existing marks does not reflect their actual usage, provides them with the opportunity to request their cancellation, at least partial cancellation in terms of the list of services they cover. If the list of goods of the registered marks are narrowed, the applicant can then request a reconsideration of the similarity between the amended list of goods.
In light of the above, the commissioner rules that the requested mark is not registerable due to Section 11(9) of the law, and thus the Section 29 objection with regard to 271338 and 271339 is moot and those marks may be considered on their merits.
Judicial Review of refusal of Trademark Application No. 271170 by Commissioner Ofer Alon, 8 November 2017
This is the first published ruling ofthe new Commissioner, Adv. Ofer Alon. The ruling is clearly reasonable, and is not particularly enlightening with regards to the Commissioner’s position on controversial issues.