Supreme Court Weighs in Trademark Feuds in Extended Arab Families

shukha

Back in June 2017, we reported on the Shukha family feud wherein the Sons of George Shukha ltd attempted to enforce their mark against Antoine Shukha and Sons.

Then, the Supreme Court threw out an Appeal by Antoine Shukha and Sons who argued that a penalty of 2500 Shekels a day until they removed infringing labels would be crippling. Judge Amit rejected the Appeal and awarded 5000 Shekels costs to Sons of George Shukha ltd.

The case went back to Judge Weinstein of the Haifa District Court who ruled on 29 November 2017, that Antoine Shukha and Sons should pay 510,000 Shekels as a fine for contempt of court.

Antoine Shukha and Sons appealed this, and requested that the ruling be stayed pending the appeal. Judge Mintz of the Supreme Court refused to stay the ruling as the State could refund the money in the unlikely event that Antoine Shukha and Sons win the Appeal.

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Another case we reported back in March 2017 was Izhiman Coffee  against brothers Maazen and Shapik Izhimian. This is again a family feud, but this time over coffee rather than oil and rice. The Israel Trademark Department refused to cancel the mark for non-use due to the fact that insufficient time had passed. The Adjudicator, Yaara Shoshani Caspi, was not convinced that there was sufficient evidence of equitable behaviour to warrant canceling the mark since the Applicants are not required by law to inform the Trademark Office of other users of the mark. (In this regards, Trademarks are different from patent applications, where the Applicant is obliged to report prior art.)

The requesters for cancellation appealed to the District Court where Judge Romanov overturned Adjudicator Shoshani-Caspi’s decision, ruling that in this case, where there was an ongoing family feud, the Applicants were obliged to inform the Israel Patent and Trademark Office of the users of the logo. Judge Romanov ruled that determining which branch of the family owned the mark was not trivial, and the trademark registration was not the correct forum. (See the Chabad ruling and the Transcendental Meditation.)

The Applicants for the mark appealed this ruling, claiming that Judge Romanov had invented a new reason for cancellation and that requiring trademark applicants to perform exhaustive inquiries into other users of similar marks was not good policy and would require the trademark examination department to adopt new rules.

They further claimed laches based on Opposers’ conduct with the Israel Patent and Trademark Office, and that their conduct was known to the Israel Patent and Trademark Office due to other records in the database.

Judge Meny Mazuz ruled that the Appeal to the District Court should be thrown out. He accepted that Section 39a ruled that there was a 5 year period for registered marks to be cancelled, but noted that Section 39b states that in cases of inequitable behaviour, complaints can be submitted at any time.

 

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