On 2 November 2016, JS IP LLC applied for Israel TM NO. 296031 for the word mark LIV, covering Night club services; night clubs; arranging and conducting night club parties; entertainment services, namely, conducting parties; night club reservation services, namely, arranging for cocktails and table service reservations at night clubs and night club events in class 41, and for bar and cocktail events in Class 43.
Before this mark was examined, on 2 July 2017, Food Makers LTD applied for Israel TM NO. 289182 for the word mark LIV, covering Services for providing food and drink; restaurants; food stands; food delivery service; catering service; coffee shops; cafeterias; all included in class 43. Food Makers requested expedited examination, claiming knowledge of a competitor intending on using similar marks which could result in misleading consumers and dilution of their mark.
The Examiner of JS IP LLC’s Application initiated a competing marks procedure under Section 29 of the Trademark Ordinance. 1972. The parties negotiated but failed to reach an understanding, and so the Examiner ordered that they submit their evidence within two months.
On 12 March 2018, JS IP LLC requested that the decision to hold a competing marks proceeding be reconsidered.
The Main Claims of the Parties
JS IP LLC clams that there was no grounds for opening a competing marks proceedings since the two marks are directed to very different services. Their application no. 289182 is directed to services provided at night in night clubs, whereas the competing Food Makers mark was for services provided to restaurants, catering and coffee shops. As JS put it: “We are dealing with two completely different trades; directed to different types of customers and serving different needs”.
Food Mixers disagree. They consider the Examiner was correct to consider the two marks as aimed at similar types of services to similar consumers; both companies provide similar services, since restaurants, coffee shops, bars and night clubs are all places of entertainment that, in addition to serving food and drink, provide an atmosphere and enjoyment. Due to the marks being identical, the Examiner is correct and a competing marks proceedings is in order.
JS IP LLC headed their request “A request for reconsideration of the need for a competing marks proceeding under Section 29 of the Ordinance”. I do not believe that that this is a request for reconsideration of the decision. The Applicant did not provide reasons justifying reconsideration, but rather considers that the Examiner erred in her assessment. Thus JS IP LLC is really appealing the Examiner’s decision.
Regulations 24-26 of the 1940 trademark regulations allow the Applicant for a trademark registration to appeal rejections of their mark. The decision to initiate a competing marks proceeding is not listed as one of those regulations that one can request reconsideration of, but the Commissioner does not consider this an intentional omission that closes the door to appealing the such a decision.
Section 29a of the Ordnance states:
(a) Where separate applications are made by different persons to be registered as proprietors of identical trademarks or those that are similar so as to deceive, in respect of the same goods or description of goods, and the special application was submitted as the previous application was accepted, the Registrar may refrain from accepting any of the applications until their rights are determined by agreement between them approved by the Registrar, and in the absence of such agreement or approval the Registrar shall decide, for reasons that shall be recorded, as to which application shall continue to be processed in accordance with this ordinance. (Amendment No. 5) 5763-2003
In this instance, the two marks are identical. However, JS wish to register the mark in classes 41 and 43, whereas Food Makers have applied to register the mark in class 43. Before initiating a competing marks proceedings, one has to assess whether the marks are for the same goods or type of goods.
The question of whether different goods are of the same type cannot be determined merely by the category. One type of good or service could be covered by different categories, and goods or services of the same category could be of different types. (see Opposition to 28264 Canlintex, 8 March 21972, and Appeal 352/69 Manhattan vs. Magfer ltd, 376 (30 November 1969). The test whether services are of the same type is based on whether customs of one vendor will realize that a service comes from a different vendor.
In this instance, JS claims that the services are of different types since they are used in “completely different” trade practices. JS’ services relate to night life, provided at night in night clubs, whereas Food Makers directs their services to restaurants, catering and coffee bars. Food Makers claims that the goods are of the same type since restaurants, coffee shops, bars and night clubs are places of entertainment with family and friends, and that in addition to providing food and drink, these places provide enjoyment and atmosphere.
The Commissioner agrees with Food Mixers. The comparison between goods and services is not pedantic and narrow (See 3559/02 The Subscribers Club Toto Zahav ltd. vs. The Council for Regulating Gambling and Sport, p.d. 59(1), 894. The question that should be asked is whether the same ‘family of services’ is being considered, such that there is a suspicion that the consumer could assume that there is a connection between the mark owners, or a franchise, or the like. If the response is positive, then the goods and services are of the same type.
JS stresses that their customers are different and their distribution channels are different. However, their request does not describe their customers or distribution channels beyond stating that they are different from those of Food Mixers.
Based on the information before him, it seems that CJ and Food Mixers both provide entertainment services. Although JC claim that their services are provided at night and Food Mixers’ by day, this is unsubstantiated, and Food Mixers’ products may also be available at night. To clarify these issues, it is necessary to have a competing marks proceeding.
The Commissioner considers that feeding stations that serve as night clubs in the evening are well known world-wide, so one cannot make an a priori determination that there is no overlap that could result in customer confusion. If during the Section 29 proceeding the parties are able to convince him that there is indeed no likelihood of confusion, the Commissioner can apply the Section 30 option, and allow co registration. What he can’t do, is make that determination without holding the proceeding.
(JC is correct that the directions for the examiners indicate that Sections 41 and 43 are independent, but he considers this irrelevant since these determinations change from time to time, and they do not rule out that both classes refer to the same type of good.
It is also noted that JS’s petition was submitted a year after the Trademark Examiner announced the competing mark proceeding, and the parties negotiated unsuccessfully in the meantime. JS explained that it was only at the evidentiary stage that they noted the mistake in opening a competing marks proceeding. The Commissioner considers that this supports Food Maker’s contention that there is possibility of confusion due to the similarity of services. Were JC to be correct that the services were wholly dissimilar, this would have been obvious to them far earlier.