CAL vs. CAL AUTO

cal bilingualCAL Auto ltd submitted Trademark Application No. 272949 for their trademark in February 2015. The mark was allowed in November 2016, and on 19 January 2017, Israel Credit Cards ltd who trade under the term CAL and own various marks including the word CAL opposed the mark.

CAL Auto’s application is for the following:

  1. Selling, marketing, advertizing and distributing vehicles, managing sales centers and showrooms, and managing businesses associated with vehicles, included in Class 35.
  2. Car Insurance, insurance, consulting and brokering car insurance, financing, financing leasing of vehicles in class 36
  3. Fixing and maintaining vehicles, partis and accessories, garages for maintaining and fixing vehicles,, owning vehicles and information and consulting services regarding vehicle mending in class 37,
  4. Renting vehicles and associated services in class 39.

The Applicant is a company that sells, leases and rents vehicles. It claims that it is one of the leading service providers in Israel and was founded in 1992, but it brings a different and novel concept to the vehicle sector.

CAL Auto owns the 2729488 mark in classes 35, 36, 37 and 39 for similar services. However, this mark is in Hebrew only.

CAL insuranceIt is noted that during the Examination of the CAL Auto mark, a Section 11(9) objection was raised based on the registered TM No. 145942 “CAL” to Israel Credit Cards ltd . But the Applicant successfully overcame the objection.

OPPOSER’S CLAIMS

The Opposer, Israel Credit Cards ltd was established in 1978 and has 35 years of activity in the Israel finance market. It offers a wide range of credit card solutions to thousands of Israeli businesses.  It owns various trademarks including Israel Trademark 10266 כ.א.ל.    in class 9 for electronic credit cards and 110267 for כ.א.ל. in class 36 covering financial services by credit card, and Mark 145942 CAL in class 36, and other marks including CAL credit, CAL choice and CAL-Fix,  ,כ.א.ל. כרדיטת ICC CREDI , ICC Zehav in class 36 andכ.א.ל.    in class 36 for financial services by credit card.

The Opposer claims to all rights in the word CAL in Hebrew and English, and that the CAL mark is included in tens of Israel registered trademarks owned by the oppose, including graphic and word marks. In these marks, the CAL part is the dominant element that catches the eye of the beholder, even when combined with other marks.

The CAL name is well known in Israel and is identified with Israel Credit Cards ltd, and the pending mark includes the word CAL and is thus likely to mislead the public. Both the Applied for mark and the opposer’s mark are word marks so there is no difference in appearance or sound. Also, Israel Credit Cards ltd considers that there is overlap in clientele and services, so the mark should be refused under a Section 11(9).

Israel Credit Cards alleges that the CAL mark has become a well-known mark that is associated with them, and so is effective at blocking marks aimed at different goods as well. They argue that the word CAL is arbitrary and meaningless in that it has no meaning relating to finance or car services, so is entitled to strong protection, and the applied for mark thus contravenes Section 11(14) of the Ordinance. If the mark is allowed to register it would create unfair trade and contravene Section 11(6). The applied for mark contravenes Section 12 of the Ordinance since it includes the word CAL which is the name of Opposer’s business and so it creates unfair trade.

APPLICANT’S CLAIMS

Cal Auto is a major player that have used the cal mark for years, both as part of the CAL Auto logo and in various publicity campaigns. It is essentially their home mark.

The CAL AUTO mark includes both the word CAL and AUTO and they are equally dominant and so this is the mark that should be compared with the CAL Mark owned by Israel Credit Cards. Because of the additional word AUTO, the marks look and sound different from the CAL credit card service marks and showing the mark in Hebrew emphasizes the difference.

The marketing channels are different. The services are different since CAL AUTO uses a sales person, and any quote will result in a phone call from a sales person or a face-to-face meeting.

The word AUTO is a qualifier that indicates that the services provided all relate to vehicles. The Applicant and Opposer provide different services, since Applicant provides car services and Opposer provides credit services.

Since 2011, CAL AUTO has gone international, and the English language mark reflects this.

As to the 11(14) charge, CAL AUTO considers that CAL credit has not established that their mark is well-known, and has not proven that granting the applied for mark will cause them damage.

As to the 11(6) charge, CAL AUTO has no intention to compete with CAL credit since their services are restricted to the car industry. Thus there is no damage to Israel Credit Cards’ mark, reputation or market share since the services are different.

As to Section 12, CAL AUTO claims that the marks are so different that there is no likelihood of confusion.

EVIDENCE

The Opposer submitted an Affidavit from their head of marketing strategy and the Applicant submitted an Affidavit from their chief counsel.

DISCUSSION AND RULING

The burden of proof is on the Applicant to shown that their pending mark can be registered, but the Opposer has to raise enough evidence to establish a rebuttable case. The burden of proof then ping pongs from one side to another. See paragraph 17 of Israel TM Opposition 170851 Orange Personal Communication Services ltd. Vs GemCom ltd.

It seems that the real contention is registration of the mark in class 35 and 36 for “financing services and financing car leasing”.

Is the Opposer’s CAL mark a well-known mark?

A main contention is that over the years, the credit card company’s mark CAL has become ‘well known’ in Israel, as the term is used in the Law. The Opposer claims that CAL is well-known, respected and in Israel, is associated with their credit services, financing, insurance and related services. They claim that their various marks that include the term CAL are well known, and so the CAL mark should enjoy blocking power against marks containing the word CAL for similar financial services.

In this regard, the reason for the Opposition is section 11(14) which states that the following marks cannot be registered:

A mark that is identical or similar to a well known mark that is registered, even for goods in a different category, if the applied for mark indicates a connection between with the owner of the well-known mark, and this could damage the reputation of the owner of the well-known mark.

To block a mark under this law, the Opposer must show that his mark is indeed well known, and that the applied for mark indicates a connection to the well known mark and that the association could be damaging.

Well known marks are defined in Section 1 as follows:

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 reputation 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.

When raising claims whether or not CAL was well-known in Israel, the parties did not relate to any specific demographic grouping. It appears that the relevant group is the Israeli consumer that owns a credit card, but since this is a significant part of the population, it is not significant if we are relating to one group or another.

As stated above, the Opposer has many marks that include the word CAL in English or Hebrew (כאל) that are registered in its name. Mr Dolev’s Affidavit included copies of many advertisements that included the word CAL or the stylized logo. Additionally, the credit card company appended a market survey from 2015 that showed that 92% of card carrying Israelis knew the name CAL. This was supplemented by details of how the survey was conducted.

The car company produced Google search results that brought up their logo and services, but the search terms were not included, so this cannot be given much evidentiary weight.

The Adjudicator had no doubt that כ.א.ל. had a reputation for credit card services, and it is likely that the term CAL is well-known in Israel. However, the paucity of evidence submitted that the English term CAL alone, without being stylized in any way, is insufficient to establish that it is well-known. Based on the case-law, the lack of evidence acts against the Opposer. (See 641/87 Kluger vs. Israel Tractors and Zion ltd, and 468/88 Trade Financing Bank vs. Salimia Matityahu et al.

Although not strictly necessary, the Adjudicator notes that the word CAL in Hebrew means easy, light(weight) and low calorie and is doubtful whether such a mark can become a well-known mark. That as may be, such a claim should be well supported by evidence which is not the case here. So allegations that CAL is well known are rejected.

Having failed to establish that CAL is a well-known mark in the meaning of Section 1 of the Ordinance, consideration of the other conditions, that there is a connection between with the owner of the well-known mark, and this could damage the reputation of the owner of the well-known mar  is superfluous.

Can the Applied for mark be registered under Section 11(9)?

There is a guiding principle that weaves itself like a scarlet thread through the Trademark Ordinance, that prevents identical or confusingly similar marks to be registered. See 10959/05 Delta Lingerie vs. Cachan Tea Board of India:

Mistakes and the danger of misleading, is the life-breath of the Ordinance. This is the main danger that we deal with. The various alternatives of Section 11 that list marks that cannot be registered, are all examples of confusingly similar marks that could mislead.

The risk of misleading that registering a mark might cause is considered using the triple test which is the sight and sound, types of goods and distribution channels, and anything else relevant, to which may be added the common sense test. See for example 261/64 Pro Pro Biscuit (Kfar Saba) ltd. vs. Frohmeinn, 210/65 Bank Igud vs. Bank Agudat Israel, 1769/83 The Boeing Company vs. Boing Travel, 4196/93 Shefa Bar Management and Services (1991) vs. Shefa Restaurants Manufacturing, Marketing and Ready Made Meals (1984).

In 5066/10 Shlomo A. Angel, vs. Y & A Berman, 2013, Judge Amit stated that:

The test in the case-law that proves misleading, is an objective test of whether there is a realistic likelihood of the defendant causing a third party to be confused when purchasing a service. To prove this, one does not need to show intent to mislead or actual misleading in practice.

Section 11(9) of the Ordinance states that the following cannot be registered:

A mark that is identical to one owned and registered to another entity, for similar goods or for goods in the same class, and for marks that are confusingly similar.

Essentially Section 11(9) of the Ordinance included the assumption that any registration of an identical mark to one already registered, is likely to cause confusion, so identical marks cannot be registered. Where marks are similar but not identical, then one has to consider if there is a danger of misleading the public or not.

In this instance, the Adjudicator considers that the marks are identical, since Cal Auto includes the term Cal and auto is generic, and thus cannot be used to create a distinction. There is nothing that is added to CAL that can be used to differentiate between the marks.

The question that remains is whether or not the goods are of the same type. To do this one has to compare the goods covered by each mark. (See Seligsohn 82-83).

In 3559/02 Toto Gold Subscribers Club vs. The Authority for Regulating Sports Gambling, 26 September 2004, it is stated that the test of similarity of goods and services is case specific, and one cannot generalize for different types of goods and services. Sometimes goods in the same class will be considered different types and sometimes goods in different classes will be considered as being the same type.

This is discussed in Opposition to 259178-9 Laboratoire HRA Pharma vs. Dr Shapira Eyal ltd, 28 December 2017:

The relevant considerations for determining whether goods or services are of the same ‘type’ for the purposes of the Ordinance, include, the type and purpose of the goods/services; usage and intention of the goods / services; distribution channels (are the goods sold side by side?); the degree of competition between the goods/services and whether they are substitutes or complementary and whether they belong to the same trade family.

With regards to complimentary goods, one should examine whether there is a strong connection between them –that is whether one is required or significant for the other, or whether the consumer would assume that the goods/services originate from the same supplier or are guaranteed by the same entity.

From the general to the particular, the question is whether services in classes 35 and 36 are ‘of the same type’. The adjudicator believes that they are, since the purchase of a car and its insurance may involve financing by credit.

The Adjudicator considers that over the past decade, the divisions between companies selling cars and those providing finance have blurred and vendors of new or used cars will either provide credit themselves or indirectly provide financial services for so doing. The Applicant’s own evidence shows that they facilitate credit for purchasing cars and obtaining insurance.

The Opposer provides credit for all purposes, including purchase of vehicles. In this regard, the Adjudicator accepts Mr Dolev’s testimony that the fields overlap, since 50% of CAL Credit’s activity is providing credit, and cars are largely purchased in installments. For 40 years, CAL has been providing credit since 1978, and credit for purchasing vehicles is the main activity.

Additionally, it has been proven that credit companies do deals with car selling companies as financiers. Mr Dolev has given examples of where CAL Credit has worked with “Shlomo Sixt”. As an Appendix to his testimony, Mr Dolev showed three advertisements for Shlomo Sixt Car rentals where the words “Shlomo CAL private leasing” appear, with the Opposer’s logo. Although the extent of use and whether it still occurs is not clear, there is certainly a connection between purchasing cars and financing the purchase.

Thus the two companies are involved in the same type of business, and the services are either competing or complimentary.

However, the Adjudicator considers that this is not the case for class 37 (fixing and maintaining vehicles) which are different from purchasing vehicles (class 39). Although maintenance may also be provided on credit terms, this has not been adequately shown.

Once financing the purchase of vehicles or their insurance can be covered by class 36, it is irrelevant whether these services are actually provided. Furthermore, listing goods and services in a registration, that a mark is not intended to cover may be inequitable behaviour.

Thus classes 35 and 36 may be considered as the same type, and the registration of CAL AUTO in these classes is not allowed.

The Adjudicator notes, that were she to be convinced that there is merely similarity and between the mark and the marks are not the same, there could still be a problem registering the marks in light of 11(9) and one has to consider whether the marks are confusingly similar.

Is there a likelihood of confusion?

The sight and sound test

The pending mark is CAL AUTO. C.A.L. credit has the following marks: CAL, CAL CREDIT LINE, CHOICE CAL, CAL-FIX. Marks should be considered in their entirety, with consideration of the relevant consumer (see 6658/09 Multilock vs. Rav Bareakh, 12 January 2010).

From the comparison above it is clear that the applied for mark includes the term CAL which is, itself, a registered mark (Israel TM 145942). Additionally, other marks of the Opposer include the word CAL with additional wording. Consequently, the Adjudicator considers that despite the applied for mark including the word AUTO and being in Hebrew and English, this is insufficient to create distinctiveness between Applicant’s mark and Opposer’s marks. The similarity is significant.

In this regard, the Examiner does not accept the Applicant’s claim that one should consider all the elements of the mark in the same way. The Opposer is correct in her claim that the word CAL as it appears in all the marks before me, is the dominant word. This increases the possibility of confusion.

The same logic applies to the marks when spoken.

Types of Goods, Customers and Marketing Channels

It will be noted that the Adjudicator has already established that the goods are of the same type (including financing of car purchase and insurance) and so the question that remains is whether the consumers are the same.

The evidence shows an overlap between the client base since purchasers of cars requiring financial assistance may be customers of either or both companies.

As to marketing channels, Mr Dolev has explained that CAL credit cards use many marketing channels including a call center and face-to0face, via a smart phone App and via the Internet site. It is even possible to purchase CAL services using credit cards of other companies.

The Adjudicator is willing to accept the claim that purchasing a vehicle is more complicating than issuing a credit card and so there is some different in the way the two services are marketed. But the Applicant is wrong in that they do not merely sell cars but provide loans for purchasing cards, and enable purchasing cars and insurance in installments. The credit card company provides the same services. Thus Mr Dolev is correct that both companies offer these services in a similar manner. Sales persons are involved in the process. This leads the adjudicator to conclude that there is a danger that the consumer will assume that services purchased as CAL AUTO are provided and financed by CAL, particularly since the logo includes the word CAL.

In this regard, the Adjudicator notes that under cross-examination, Mr Zeevi noted that at the time of the discussion, the Applicant did not provide credit directly, but only mediated credit from third parties. In light of this, the Adjudicator is surprised that they do not think that there is a danger of consumer assuming that the funding comes from CAL.  As Mr Dolev put it:

Yes, since he sells under CAL AUTO. Under CAL. Under CAL. It is all CAL. All the time he hears CAL CAL CAL, so he is likely to think that this is the loaner, as he hears in the advertisements.

Thus there is an overlap in consumers and distribution channels for the services provided and both applicant’s and opposer’s marks. In light of this, one can only conclude that there is a likelihood of confusion.

The Common Sense test and Other Relevant Issues

The Adjudicator does not find that there is any issue that, if considered, would change the conclusion. She does not consider that the bilingual mark has acquired a distinction in Israel. The Applicant claims that they have been using their mark for 20 years. However the evidence submitted does not support this usage for financing car purchases or this long period. The Facebook and Internet images are not dated. The mark actually in current use is 272948 in Hebrew only.

The Applicant provided evidence of having spent large sums on publicity, but this is only the case in the period 2012-2016.

CAL AUTO IN HEBREWMr Zeevi, under cross –examination, agreed that the marks used on the Internet were in Hebrew only, but could not provide an explanation for this beyond the fact that they were intended for an Israeli audience. He did provide adverts in other languages but did not explain when and where they were used.

The Adjudicator is aware of the questions regarding the background for selection of the desired mark with the emphasis on the word CAL. But she does not think that CAL credit cards have shown that this was an intentional attempt to free-ride on their reputation, despite the koph (ק) of CAL (קל) usually being transliterated with a K (or Q) and not with a C. Indeed, Mr Dolev testifying for CAL Credit Cards stated that had CAL AUTO chosen to write the term CAL with a K, they would not have opposed the mark.

In conclusion, the mark contravenes Section 11(9) and cannot be registered.

As to whether sections 11(6) and 12 are contravened as well, this is superfluous. However, since CAL is the actual name of the credit card company, its usage by CAL AUTO does contravene Sections 11(6) and 12 .

CONCLUSION

The Opposition to Israel Trademark Application No 271949 in classes 37 and 39 is accepted. Costs of 25,000 Shekels are awarded against CAL Auto LTD.

COMMENT

This case is similar to Apple. Where one company sells music, particularly Beatles music, and another makes computers, there is no likelihood of confusion. Once Apple computers start making IPods and smart phones that are used as music players, suddenly, the reality changes.  As long as Cal Auto sold cars and CAL provided credit facilities, they were perceived as different. Once cars are privately leased which is a form of hire purchase, the car company treads on the toes of the credit company. Ironically, the company Cal Auto is well established, but only verbally and in written adverts in Hebrew. There is nothing that the credit card company can do about the long usage in Hebrew, but now Cal Auto want to sell abroad. Here they are going into English, and the Israeli credit company can and does stop it. However, I am not sure that Cal credit cards are known abroad, even though the credit company uses the English name CAL in their current logo.

The Examiner originally allowed the mark. Rather than fighting an all or nothing opposition, one wonders if the parties couldn’t have decided on a compromise, registering KAL AUTO with a K?



Categories: Intellectual Property, Israel IP, Israel Patent Office Rulings, Israel Trademark, trademark, trademarks, Uncategorized, החלטת רשות הפטנטים, סימן מסחר, סימני מסחר, סמני מסחר, קניין רוחני, קנין רוחני

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