“Think Different” and “Tick Different” –

Tick different

Apple Inc filed Israel trademark no. 284172 for the slogan “Think Different” in classes 14, 28, 35, 36, 41 and 42.

Then Swatch AG filed Israel Trademark Nos. 281116 and 281332 for “Tick Different” in classes 9 and 14.

Now “think” and “tick” mean totally different things, but visually, the marks have a similarity, in that they both start with a t, have an I in the middle, and end with a k. The Israel Trademark Examiner saw a likelihood of confusion for fashion conscious illiterates or those whose mother tongue is not English, and instituted a competing marks procedure.

Apple’s slogan ‘think different’ dates back to 1997 and was a response by Steve Jobs to IBM’s “Think” campaign, and they already have a registered mark no. 266923 for “Think Different” in class 9. Consequently, in an Office Action Swatch’s marks were refused to under Section 11(9) of the Ordinance.

On 1 November 2017, Apple requested that the competing marks procedure be suspended until if and when Swatch managed to overcome the Section 11(9) objection.

Think different

Apple claims to be one of the leading technology companies in the world. They allege that the “Think Different” campaign should be considered a “well-known mark” under the relevant section of the Ordinance, and is thus entitled to wide protection against marks, seen in different classes, and Swatch’s Tick Different is confusingly similar thereto. Furthermore, Swatch’s application was rejected under Section 11(9) of the Ordinance in light of Apple’s registered mark. Apple considers the Angel Bakery vs. Shlomo Angel Patisserie LTD from 2016 as a relevant precedent. In that case, there was a competing marks proceeding in parallel with formal examination based on earlier registered marks and former Commissioner Asa Kling suspended the Competing Marks proceeding whilst examining the registerability of one mark based on previously registered marks. In this instance as well, Apple argues that it is ridiculous to have to fight a competing marks proceeding, where, if Swatch were to win, they would in all probability not be able to register their mark in light of the previously registered Apple mark.

swatch

On 4 February 2018 Swatch responded, claiming that the competing marks procedure should NOT be suspended since unlike the Angel’s case, Think Different should not prevent Tick Different from being registered. Reasons given included that Apple was not using Think Different in Class 9, and because the marks were not confusingly similar phonetically or visually, and anyway Class 9 (Computers, Software, Electronic instruments, & Scientific appliances) and Class 14 (precious metals and their alloys and goods in precious metals or coated therewith, hierological and chronometric instruments).

Swatch considers that a competing marks procedure is necessary to decide which mark takes precedence. Swatch considers that the Commissioner is obliged to conduct a competing marks procedure if there are pending marks to two applicants that are confusingly similar and the parties are unable to agree to coexist, and this should occur prior to examination of the a priori registerability of either mark. The Angel’s case is different since in this instance, the list of goods to be protected by the mark is different for the two applicants.

ON 14 February 2018, Apple responded that they were using the Think Different mark, the two marks were undeniably similar and the Angel case is very relevant. Furthermore, as far as competing marks is concerned, it is irrelevant if the applied for marks are in the same category or not.

RULING

Section 29(a) is the proceeding that decides which of competing marks takes precedent:

Where separate applications are made by different persons to be registered as proprietors respectively of identical, or similar to a misleading degree, trademarks in respect of the same goods or goods of the same trade description, and the later application was filed before the acceptance of the prior application, the Registrar may refrain from accepting the applications until their respective rights have been determined by agreement between them approved by the Registrar. In the absence of such agreement or approval, the Registrar shall decide, for reasons which shall be recorded, which application shall continue to be processed pursuant to the provisions of this Ordinance.

Where the Commissioner uses his Section 29(a) discretionary power, there are two applicants that use the same or very similar marks. In such circumstances, the Section 29a ruling will cancel the rights of one of the parties to use the mark where, were it not for the competing mark, both applicants would be able to use their marks. Thus it is the second application that might make the mark non-registerable and effectively both parties attempt to prevent the other from continuing to use a mark.

In a long list of decisions and rulings, the Trademark Office considers the following:

  1. Who filed first?
  2. The extent of usage, and
  3. Issues of bad faith in selecting the mark.

See for example, Appeal 11188/03 Contact Linsen Israel ltd vs. Commissioner of Patents & Trademarks (5 May 2005) and Appeal 878/04 Yotvata ltd. vs. Tnuva Cooperative 4 March 2007 and Appeal 8987/05 Yehuda Malchi vs. Sabon Shel Paam (2000) ltd.

As a rule, in the Competing Marks procedure, the issue of registerability over existing marks is not considered, and there is an assumption that both marks are registerable and would be registered if not for the Competing Marks Proceeding (See Bagatz 228/65 Fromein & sons ltd vs Pro Pro Biscuits ltd p.d. 19(3) 337 (1965) where Judge Salzmann stated:

A proceeding under Section 17 (now Section 29) is not intended to determine whether a mark is registerable. In such a proceeding the Commissioner works under the assumption that both marks are registerable. At a later stage, after the mark has published and an opposition is filed, this assumption may be lost.

If it is clear that if the Commissioner is not willing to assume registerability of both marks, he will not initiate a Competing Marks procedure under Section 29(a) of the Ordinance. It is only sensible to start a Section 29a proceeding if one can assume that the marks are registerable under Sections 8, 11 and 12, and the following quotation from Frohmein is relevant here:

Where the Commissioner is not willing to assume (that the two marks are otherwise registerable), it is inappropriate to proceed according to Section 17 (i.e. Section 29) and consider which mark takes precedence, since this assumes that both marks would be registerable if not for the competing mark (BAGATZ 228/65 [1] page 341).

Furthermore, Judge Barak added in re Al Din that under a Section 29a proceeding, the Commissioner has the authority to decide that neither mark is registerable before launching the Competing Marks Proceeding since there is no point or value in to conduct a long inter-partes proceeding where neither mark is registerable:

“Nevertheless, there is nothing to prevent the Commissioner to refrain from determining which mark takes precedence under Section 29 if, based on the evidence before him, neither is registerable. (Bagatz 90/70 [3]. For what is the purpose of holding a long and involved proceeding under Section 29 of the Ordinance if at the end it is determined that the party with the greater lack of registerability will not be awarded the mark in his name?”

Indeed, even if a Competing Marks Proceeding IS initiated under Section 29a, there is nothing to stop the Commissioner (and from re AL Din it is indeed fitting for him to) from considering if either mark is registerable. Otherwise the parties can waste time fighting a Competing Marks procedure only for the winning party to later learn that the mark cannot be registered in his name.

The inherently logical approach is to first consider registerability and only then to hold a Competing Marks procedure, as the Supreme Court ruled in Bagatz 296/85 Siya Siyak Nau (Anthony) vs. The Commissioner of Patents and Trademarks. p. d. 40(4) 770 where, in pages 775-776 of the ruling, it is stated that:

The Authority of the Commissioner to consider registerability coexists with the authority to consider which party takes priority. There is no room to consider which mark takes precedence where there is no registration worthy mark. Anyway, the other party will prevail over the applicant for the non-registerable mark.

This problematic nature of the Competing Marks Proceeding was realized by the Commission of Patents and Trademarks in 1167390 and 166845 Danin vs Shidurei Keshet ltd (26 December 2005) where it was ruled that:

It is a matter of case-law that Section 29 proceedings with respect to competing marks do not relate to the registerability of the marks per se, but only with regards to which of the two pending applications should take precedent. See re Frohmein 342, and Bagatz 450/80 p.d. 35, 187 (2) on page 189, Eshel and Sabon shel Paam, is only true with regards to considering registerabily of the  mark from one party, and is noted that the preference of one party over the other is not indicative that the mark is registerable and does not guarantee that it will be registered. However, one is uncomfortable with a situation where a party that wins a competing mark proceeding will eventually have their mark refused, and the party that loses the competing marks proceeding can then reapply and register their mark.

On 23 February 2012 Circular 013/2012 was published. This relates to Competing Marks Proceedings where objections are also raised against the registerability of one or other mark. Under the Circular, the parties to the Competing Marks Proceeding are allowed to file a joint submission to suspend the Competing Marks Proceeding under Section 29a until the substantive objections are addressed.

In subsequent proceedings, as in this instance, the parties do not see eye to eye, as in the Angel case:

As stated in the Circular, the parties have the opportunity to make a joint submission to request substantive examination […] however in this instance, one party’s issued marks are cited against the application of the other party whilst there is a Competing Marks Proceeding under section 29a of the Ordinance. This scenario results in the party whose marks are cited to prefer the substantive objections to be dealt with first. If the Applicant is NOT able to overcome the substantive objection, the Section 29a proceeding is moot, saving the other party the cost and aggravation of the competing marks proceeding and makes it unlikely that the parties will agree on suspension.

Since this Circular was published, there have been a number of Competing Marks Proceedings that were suspended pending rulings on registerability. However, these requests were submitted without agreement of both parties and different rulings ensued, see for example PayPal Inc. vs. Online Ordering ltd, 5 January 2017George Shukha Haifa ltd. vs. Fareed Khalaf Sons Company, 27 November 2016the Angel rulingetc. It has been established that in some cases, one can ignore the joint request requirement and the Commissioner can simply suspend the Competing Marks Proceeding pending consideration of the substantive objections.

In this instance, there are substantive objections against the Swatch mark, however the parties disagree regarding suspending the Competing Marks Proceeding.

Swatch’s “Tick Different” marks are objected to in light of registered Apple marks for “Think Different”, whereas apart from the Competing Marks Proceeding, the new Apple think Different mark is not objected to. One cannot conclude that were there not to be a Competing Marks Proceeding, Swatch’s marks would certainly be registerable.

An issued mark that has been examined, allowed, and published for opposition purposes, is considered stronger than a pending application. For example, the owner of a registered mark is entitled to a monopoly for that mark and this is not the case with a mark that has yet to be allowed. A registered mark can be enforced against infringers, whereas a pending mark cannot, unless it is a well-known mark. Thus it would appear that Apple’s issued Think Different mark should take priority over the pending Swatch mark.

Consequently, the Adjudicator of IP, Ms Yaara Shoshani Caspi rules that it is appropriate to consider whether or not there is a confusing similarity between the two marks BEFORE considering the Competing Marks issue.

Ms Shoshani Caspi notes that she is unhappy with Swatch arguing two contradictory positions. Swatch has submitted copious arguments to the effect that “Tick Different” is not confusingly similar to “Think Different”, but nevertheless, it is appropriate to fight a Competing Marks Procedure which is based on the inherent understanding that there is a confusing similarity and the marks cannot coexist.  Thus Swatch is arguing that classes 9 and 14 (computers and watches) are different classes of goods, but nevertheless a Competing Marks Proceeding is appropriate.

It is fitting to allow Swatch to try to argue that Tick Different in classes 9 and 14 is not confusingly similar to Think Different in class 9 which is already registered. It is right to do this before addressing the Competing Marks Procedure.

This ruling is in accordance with the Angel’s decision where there was also a Section 11(9) objection and the Competing Marks Proceeding was suspended pending resolution of the objections.

Swatch is to respond to the substantive Section 11(9) objections against the two Tick Different applications, within 30 days. If successful, the Competing Marks Proceeding will ensue.

Ruling by Ms Shoshani Caspi re Think Different to Apple vs. Tick Different to Swatch, 28 February 2018

 

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