AMUSE LLC submitted Israel TM Application Number 266361 for the word-mark AMUSE SOCIETY in class 25. The Application was the national phase of international Trademark Application No. 1207555 filed under the Madrid Protocol. Ron Uziel represented by Kolodny Advocates opposed the registration.
Amuse LLC is a California-based company that deals with clothing and fashion accessories. Ron Uziel is an Israeli who owns a clothing store in the Rishon l’Zion Gold Shopping Center called Society.
On 3 November 2015, the Trademark Office informed the International Bureau that the mark was temporarily refused due to the similarity with Israel TM No 188244 “SOCIETY” under Section 11(9) of the Ordinance. The Applicant argued that the mark was different due to the additional word, and an Affidavit was submitted by Paul Naude who is a manager for AMUSE LLC. The Examiner was willing to allow the mark subject to the agreement of the owner of Israel TM No 188244 which is Ron Uziel on allowance, which the Applicant agreed to.
The mark published for Opposition purposes on 20 April 2016, and on 13 July 2016 Ron Uziel represented by Kolodny Advocates filed an Opposition.
The parties filed their statements of case and responses, and Dr Shlomo Cohen Law Offices, representing the Opposer, requested that Naude’s Affidavit be translated into Hebrew or removed from the file.
On 6 August 2017, the Adjudicator of IP, Ms Yaara Shoshani Caspi, ruled that Naude’s affidavit could remain on record.
Nevertheless, the Applicant requested to replace that Affidavit with one from Isaac House, the CEO of the local Israel Distributor, and this replacement was authorized.
On 17 December 2017 an oral proceeding was held before the Adjudicator during which the Applicant submitted various exhibits including a business card of the Opposer that included the word Sexes, Facebook pages with the word Sexes, a carry case for clothing with the term Sexes, a shopping receipt on which was written Sexes Uziel Ron, a clothing label purchased in the store, on which the word Society did not appear, and a label with the word Sexes written large and the term Society written in a smaller font. In addition, the Applicant submitted a Google search for the term Amuse Society.
The Opposer submitted various photographs of the inside and outside of the store that showed the term Society, and also a screen capture of the Amuse Society website that showed outlets around the world, but not including any Israeli distributor.
The Claims of the Parties
The Opposer claims that the mark in question is identical to their mark. Alternatively, they claim that it is confusingly similar to their mark and that Section 9(11) prohibits registration of marks that are confusingly similar to registered marks for the same type of goods, and that the Applied for mark includes their registered mark.
In this regard the Opposer claims that his customer base is varied and that the goods sold in his shops are intended for the entire public of all ages. Thus the intended customers for the Applicant’s goods under the applied-for mark overlaps the customer base of the Opposer.
Furthermore, the Opposer claims that his store sells evening wear, day to day wear and sporty elegant clothing. The collection of clothing for which the Applicant has filed a trademark overlaps categories sold in the Opposer’s store.
The Opposer further claims that use of the requested mark cannot be used to show acquired distinctiveness since both marks are in class 25. Allowing the requested mark to be registered would cause unfair competition. The Opposer contends that prior to the filing of the pending Application, the Applicant did not conduct any business under the mark in Israel; no data regarding sales or investment in publicity were submitted, so the Applicant has failed to establish acquired distinctiveness.
The Applicant considers that its products are popular worldwide amongst the clientele for designer clothing. Furthermore, with reference to the various exhibits, they claim to have spent a fortune promoting the mark, and sufficient evidence has been submitted to show that the requested mark should be considered as being a well- known mark as defined in the Ordinance.
Furthermore, the Applicant claims that their clothing is popular informal wear available at attractive prices, publicized by being on the shelf, whereas the Opposer markets their clothing at expensive prices from a single store specializing in evening wear.
Finally, the Applicant argues that the Opposer’s use of the mark Sexes and not the registered mark adversely affects their Opposition.
DISCUSSION AND RULING
The first issue is whether the Applied for mark is well known in Israel, since well- known marks have a higher status than other marks in Israel. To answer this question, reference is made to Section 1 of the Ordinance:
“A well-known mark is one that is owned by a citizen of any friendly country or a resident or one having an active business there, whether registered or in use in Israel; when considering whether a mark is well known, the extent that it is known by the relevant demographic in Israel due to marketing will be considered.
The determination of whether a mark is to be considered well-known is done with reference to various tests that crystallized in the case law, particularly in Appeal 9193/03 Aktiebolag vs. Absolut Shoes, 19 July 2004. See also the Decision concerning 93261 Pentax S.R.L. vs. ASAHI KOGAKU KOGYO KABUSHIKI KAISHA, 2003. These tests include the notoriety of the mark in the relevant demographic, volume and time extent of usage, market penetration, degree and time extent of publicity, the extent to which the mark is known, the extent of use of the mark, whether it is registered, whether it is enforced, its distinctiveness and the nature and usage of similar marks by third parties, the type of goods or services and the distribution channels, and the extent by which the mark is seen to be an indication of quality.
As known, determining whether a trademark is or is not well known is a factual determination. To prove this, one has to provide well-based factual and objective evidence (see paragraph 5 of the Absolut ruling).
If it is determined that contrary to that alleged, the requested mark is not a well-known mark in Israel, then it will be necessary to consider whether the requesting mark is confusingly similar with the earlier mark cited under Section 11(9) which prohibits from registration:
A mark that is identical to a mark owned by a different entity which is previously registered in the trademark register for similar goods, or for goods of the same type, and this is true for misleadingly similar marks
Thus the established mark will prevent registration of confusingly similar marks by other entities, providing that they are for goods of a similar nature.
When considering the similarity of marks, if there is an identical dominant element in both marks, the second mark cannot be registered, since the similarity creates an assumption that there is a likelihood of confusion. See Oppositions to 163798-9, 166319, 169048-53, 170889, 180345, 193259-67, 197036-8, 199980-3 Shefa Zichyonot vs. Aroma Holdings ltd, 25 February 2013, paragraph 32.
When considering similarity, one applies the ‘triple test’, see Appeal 5454/02 Taam Teva (1988) Tovoli ltd vs. Ambrosia Superb ltd, 4 Feb 2003, and Appeal 1427/05 M.B. Glatt Off Mehadrin vs. Patent Office, from 25 June 2007. The mark is considered in its entirety, but emphasis is given to the dominant elements and the improper recall of consumers is taken into account.
In this instance, the Applicant’s evidence does not enable one to clearly state that the relevant group is young women. This is a misleading assessment and is somewhat archaic and not politically correct. There is no clear distinction between clothing for young women and that for the more mature ladies. These are attempts to divide women’s fashion that the Adjudicator considers unacceptable, and thus rules that the relevant demographic is Israeli women. This is true for Applicant and Opposer, and the trademarked clothing could be found in the wardrobe of any woman, whatever her age.
However, neither party has produced sufficient evidence to support a claim that their marks are well-known marks in Israel. Neither brand is well known or has a quality reputation that provides wide protection, so consideration of 11(13) and 11(15) of the law is unnecessary.
Likelihood of confusion under Section 11(9)
The likelihood of confusion under Section 11(9) is considered with respect to the ‘triple test’ which relates to the sight and sound of the mark, the type of goods, clientele and distribution channels, and anything else of relevance. See 261/64 ProPro Biscuits (Kfar Sava) ltd. vs. Frohmeinn and Sons ltd, 1965, Appeal 5454/02 Taam Teva (1988) Tovoli ltd vs. Ambrosia Superb ltd, 4 Feb 2003 and 5792/99 Religious Jewish Education Family (1997) ltd vs. SMS Advertising, Marketing and Sales Promotions ltd, 2001.
The applied-for mark is for clothing, shoes and head-coverings in class 25, and includes:
“Shirts, T-shirts, woven shirts, sweaters, tank tops, camisoles, pajamas, boxers, underwear, dresses, skirts, sweat pants, pants, shorts, swimwear, belts, socks, scarves, hats, caps, beanies, visors.”
The registered mark is also for class 25, but covers all types of clothing. Therefore the types of goods overlap.
Sight and Sound
The sight and sound of the marks is the main test. The general appearance is considered, as is the first impression, since consumers do not necessarily make careful choices and may not notice details. See 6658/09 Multilock vs. Rav Bareakh ltd paragraph 9 (12 January 2010).
The applied-for mark includes the words AMUSE and SOCIETY, whereas the registered mark is for SOCIETY. In English, unlike in Hebrew, the noun is Society, and amuse is simply an adverb or adjective, and so the dominant word is society. Although noting that the word society is not in the registered mark at all, and that the word is amuse and not amused, the Adjudicator does not consider that this is sufficient to make the word Amuse dominant.
Furthermore, even if she were to accept that the combination is unique and should be considered as a phrase, the courts have already ruled that a mark including another’s mark may not be registered. See 6860-01-17 BIG DEAL trading vs. YNET BIG DEAL, 7 January 2018. The word SOCIETY is arbitrary, or at best a hint type mark when applied to clothes. This makes it a stronger mark than Big Deal, which was almost generic in nature.
Type of Goods
The Applicant’s list of goods is fully covered by the registered mark. The Applicant has not even shown evidence of sales in Israel, neither via physical outlets or over the Internet.
The Everything Else Test
The Applicant has not demonstrated a reputation in Israel, and following the BIG DEAL ruling, it probably wouldn’t help them even if they were known locally.
On 30 May 2018, the Applicant applied to limit their mark to:
“Shirts, T-shirts, woven shirts, sweaters, tank tops, camisoles, dresses, skirts, sweat pants, pants, shorts, swimwear.”
The Adjudicator does not see what difference this makes.
The Opposition is accepted and the costs of 7000 NIS excluding VAT are awarded to the Opposer, to be paid within 30 days.
Opposition to Israel TM No. 266261, Ruling by Ms Yaara Shoshani Caspi, 30 July 2018.
If the Adjudicator was really politically correct (if physiologically flawed) she should not merely not accept age demographics in clothing which is clearly ageist, but also should condemn differentiating between men’s clothing and women’s clothing. Gender is no longer defined by genitalia, and is more an issue of choice. It is thus highly discriminatory and not politically correct for fashion stores to only sell ladies’ clothing in women’s sizes, and they should clearly stock men’s sizes as well.
In the phrase Amuse Society, since the word is not amused, one can conclude that the word Amuse is the name of the society and is dominant, as in Jesuit Society, Jewish Society, Stamp Society, Old Car Society, Rock Climbing Society, etc.
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