Mutually Assured Trademark Destruction

This case deals with a couple of competing Israeli companies that make aluminum profiles for windows and doors for business and domestic premises that filed cancellation actions against each other’s trademarks.

Here, a word of explanation is in order. The problem with extruded profiles is that the front surface which is seen when installed as a window frame, etc. is generic.  Companies providing such profiles argue that there profiles are of a high quality and are not the same as alternatives on the market.  Marking the profiles with the name of company is difficult, and these are not generally sold in packages.  Adi Levit Esq, when working for Seligsohn Gabrieli, managed to register the cross section of a profile as a design and created a new way of protection.  Design registration is for a short period and the protection is a little dodgy as most of the features are not seen and those that are, are aesthetic and generic. Those features not seen are either functional stiffeners, or are not really design elements at all. Filing patterns of lines that extend on the back of the extrusions as trademarks enables the manufacturer to mark such profiles in a way that building contractors or window frame manufacturers will hopefully recognize as being an indication of origin and a sign of quality.

Relevant decisions include a recent ruling that explains why design registration is not appropriate for such profiles. 

A couple of years ago, the District Court upheld a decision by Deputy Commissioner Ms Jacqueline Bracha, that a trademark application for a profile with a V shaped indentation or protuberance was invalid.  That ruling was also appealed to and subsequently upheld by the Supreme Court.

The case

276383Alum Gold LTD applied to cancel Profal’s trademark no 276383 which is for a isometric projection of a profile as shown alongside. The mark, in class 6 is describes as follows: This trademark refers to a flat surface that includes a protrusion lengthwise whose height is 0.3 mm and width is 2 mm on the insignificant surface of the profile. 

Meanwhile, Profal applied to cancel Alum Gold’s trademark numbers 247031 and 247032. The cancelation requests were submitted under Section 38 and 39 of the Trademark Ordinance 1972.

247031Alum Gold’s mark is shown alongside. The 247031 trademark, also in class 6 is described as follows:
This trademark refers to a flat surface that includes two protrusions lengthwise. The height of the first is 0.3 mm and the width is 1.5 mm. The height of the second is 0.3 mm and the width is 0.75 mm, whereas a gap of 2 mm exists between the two protrusions, on the insignificant surface of the profile.

247032The 247032 mark is shown alongside. It is also in class 6 and the description reads: This trademark refers to a flat surface that includes two indentations lengthwise. The depth of the first is 0.3 mm and the width is 1.5 mm. The depth of second is 0.3 mm and the width is 0.75 mm, whereas a gap of 2 mm exists between the two indentations, on the insignificant surface of the profile.

Alum Gold’s Position

Alum Gold submitted a counter statement-of-case in response to the cancelation request filed against their marks, and Profal submitted a counter statement-of-case against the cancellation proceeding against their mark. Evidence was submitted and on 18 February 2018, a hearing was held, and then both parties submitted their summations.

Alum Gold responded to the cancellation request against its trademarks by claiming that they are one of the leading Israeli companies making aluminium profiles from aluminium [I suppose this is in case anyone assumed that aluminium profiles were made from gold – MF]. They are active since 1971 and have a reputation for importing and manufacturing aluminium. Profal was founded in 1997 which was 20 years after Alum Gold. Alum Gold does not consider that their marks are confusingly similar to those registered by Profal. In the alternative, they submit that should the Commissioner consider the marks as being confusingly similar, those of Profal should be canceled, since they were submitted after those of Alum Gold were registered.   Furthermore, Alum Gold allege that the Profal marks lack both inherent and acquired distinctiveness. Alum Gold alleges that Profal acted in bad faith by not informing the Commissioner when registering their marks, that they were confusingly similar to those registered to Alum Gold. Furthermore, they allege that Profal uses a different mark from that which they had registered.

Alum Gold submits that nowadays the number of lines extruded on a profile cannot be considered as indicative of the source of the profile. Alum Gold cited 144/85 Klil Non Ferrous Metals ltd vs. Commissioner of Patents, Designs and Trademarks, p.d. 42 (1) 309 which ruled that no manufacturer has a monopoly on the number of lines, due to the limitations created by the width of the profile itself. Thus Alum Gold argues that one cannot obtain a trademark for a two striped profile and claimed that there are at least 20 markings on aluminium profiles that consist of two lines on a minor surface that is no longer visible once the profile is installed.

Alum Gold argued that the company that was identified by two lines was Mipromel which is no longer active. It was the first to register two line marks, and registered six of these with indentations or protrusions that had square, rounded or triangular profiles.

Alum Gold argued that the relevant customer includes aluminum craftsmen, stores and large manufacturers of windows and doors.

As to Profal’s marks that Alum Gold requested to cancel, Alum Gold contended that Profal’s marks lacked distinctiveness in contradistinction to Section 8 of the Ordinance. The mark lacks inherent distinctiveness since the separation of the two lines is not defined. Furthermore, Profal’s mark lacks acquired distinctiveness since the relevant clientele does not know the specific dimensions of the registered mark which would allow them to differentiate between Profal’s extrusions and those extruded on profiles by others.

Profal could not have acquired distinctiveness for the registered mark since they actually use a different marking.  Should the Commissioner find that there is a confusing similarity between Profal’s mark and those of Alum Gold, then Profal’s marks should be cancelled under Sections 11(6) and 11(9) of the Ordinance as Alum Gold’s marks were registered earlier. Furthermore, there is a confusing similarity between Profal’s marks and those of Mipromel and this creates unfair competition in the marketplace.

Profal’s trademark registrations should be cancelled as they were registered in bad faith and since Profal themselves claim the mark is similar to previously registered marks of others, that were registered by Alum Gold.

Profal’s Position

With regard to Profal claims regarding their mark that is being challenged with a cancellation request, Profal argues that they are one of the leading Israeli companies making aluminum profiles and are active since 1951. In its years of manufacturing, Profal has developed a reputation,. Profal has consistently used a double line marking on their profiles, and has been doing so from before Alum Gold began using their registered trademarks.  Their manufacturing and marketing turnover is measured in millions of shekels and most of their profiles are marked with the two line trademark.

The Profal mark was examined and registered as having both inherent and acquired distinctiveness as required by Section 8 of the Law.

During Examination, the Examiner cited Israel Trademark Number 124983 to Extal ltd, which was a mark for two protrusions extending the length of the extrusion. The Extal mark had been abandoned, so the Examiner was prepared to allow Profal to register their mark. Extal no longer uses this mark. Even if other manufacturers use two extruded protrusions, they do not have a registered trademark for this.

Profal acted in good faith to register their mark. It does not create unfair competition and is not against the public order. Therefore it does not contravene Sections 11(5), 11(6) or 39a(1) of the Trademark Ordinance.

In practice, Profal uses the trademark that they registered, and do not use other marks on their profiles.

As to the Alum Gold trademark registrations that Profal has requested be cancelled, Profal makes the following submissions:

  1. Alum Gold submitted their trademark application in contravention of Section 39(a)1 of the Ordinance since they did not note that for years Alum Gold had a relationship with Profal of manufacturer and distributor, and by virtue of this relationship, Alum Gold was aware of Profal’s mark and its commercial success with its clients. When Alum Gold decided to import profiles into Israel that were imported from China, they chose a mark that was similar to Profal’s mark in order to free ride on Profal’s reputation. Alum Gold even acted to monopolize marks that are similar to those that Profal used!
  2. Profal’s mark and Alum Gold’s mark are only slightly different visually in that the width or the lines are slightly narrower, one being about 0.5 mm and the other being about 1.25 mm. Despite the minor differences, consumers could purchase an Alum Gold profile thinking that it was manufactured by Profal. Profal claimed that this happened in practice. Both companies sell to the same consumer base.
  3. Alum Gold’s trademarks are not registerable under Section 8 of the Ordinance, since they do not serve to differentiate between Alum Gold’s trademarks and those of Profal.
  4. Alum Gold’s trademark is not registerable as it contravenes Section 11(6) of the Ordinance, since it is similar to Profal’s mark and creates unfair competition.

The Evidence of the Parties

The Cancellation Proceeding Against Profal’s Trademark

Alum Gold submitted an Affidavit of Amir Bakshi – their CEO and a partner of the firm, and one from Mushi Mardler, of a company that paints aluminium profiles, one from Eitan Golan the C.E.O. of Golan Zach ltd, and one from Nir Raz who is the owner of Nirols ltd, and also an expert witness statement by Avi Stern – an Aluminium Consultant.

As counter-evidence, Profal submitted a statement of Mr Yair Levin – the CEO of Profal, and one of Mr. Victor Calfon who is the Director of Benfashi Aluminium Industries, ltd. Then Alum Gold submitted a second Affidavit of Amir Bakshi in response.

The Cancellation Proceeding Against Alum Gold’s Trademark

Profal submitted an Affidavit of Mr. Yair Levin, and one of Mr. Gal Segal the CEO of Alubin, one of Mr. Victor Calfon and an expert opinion of Ms Stella Talisman, a licensed engineer.

Alum Gold submitted the samer Affidavits that they had used as evidence in the cancellation request they had initiated as their counter-evidence to Profal’s case against them.

Profal submitted in response, the same affidavit’s they had used as counter-evidence against Alum-Gold’ss attempt to cancel their trademark.

Discussion and Ruling

In cancellation actions, the burden of proof is on the party requesting cancellation of the trademark. See Amir Fridman, “Trademark Law, Rulings and Comparative Law edition 2, 2005, 6670670, and Bagatz 144/85 Klil Non-Ferrous Metals ltd vs. Commissioner of Patents, Designs and Trademarks, p.d. 42(1) 309, 318 (1988):

The burden of showing that a trademark  is registerable is on the party requesting registration, but the burden of proof that a registered mark should be canceled is on the party requesting cancellation. The registration of a mark serves as a prima facie indication that the trademark was registerable and the party requesting cancellation has to prove his case. In all cases where there is a burden of proof on one party or the other, it shifts from side to side during the proceeding, but if the validity is unclear, the fact that the mark was registered serves the owner.

One cannot be flippant about this heavy burden, since cancellation of a trademark is the confiscation of a property from its owners and transferring it to the public domain with all that this entails. So in this instance of mutual cancellation actions, one has to consider whether either side submitted sufficient evidence to warrant cancellation of the challenged trademarks.

The Procedural Framework

In this ruling, the legitimacy of Alum Gold’s trademark in light of Profal’s challenge is reconsidered. Similarly, the legitimacy of Profal’s trademark in light Alum Gold’s challenge is reconsidered.  The claims of both parties raise largely similar issues, and this affects the hearing in this matter.

The Claim of Confusing Similarity

The claim that the trademarks are confusingly similar is one of the main contentions in this matter.

Firstly one notes that Profal’s claim under Section 11(9) is not relevant, since Alum Gold’s trademark was registered before Profal’s and so Profal cannot base a cancellation request on Section 11(9).

However, one has to consider the likelihood of confusion between registered marks which is the basis of the Section 11(6) opposition by Profal, and since the parties have concentrated on this issue, both in the mutual cancellation requests and in their summations.

As known, the likelihood of confusion is evaluated with the “triple test”, developed in the case-law, which includes the look and sound of the mark, the customers and distribution channels and the other relevant considerations. To this is added the ‘common sense’ test as a secondary test.  See 261/64 Pro-Pro Biscuits (Kfar Saba) ltd vs. Frohmein & Sons ltd, p. d. 18(3) 275 (1964); Appeal 5454/02 Taam Teva (1988); Tivoli vs. Ambrosia Surprise, p/d/ 57(2) 438 (2003); Civil Action 5792/99 Communication – Religious Jewish Education Family (1997) ltd vs. S.B.S. Publicity, Marketing and Sales Promotion ltd, p.d. 54(3) 933 (2001).

Firstly, we will consider the likelihood of misleading of Profal’s trademark in light of that of Alum Gold. The Adjudicator considers that firstly one should review the legal aluminium profile sector in Israel.

Marking aluminium profiles with long stripes is an established practice in the industry. The purpose of the marking is to identify the manufacturer and it is generally achieved by a protruding ridge or an indented trough along the entire length of the profile that does not affect the functionality. Such aluminium profiles are purchased and cut to size by the customers for the various uses, and this is the reason for marking along the entire length [MF – note, there is another reason, in that the marks are extruded continuously along with the profile, which is then cut into lengths]. The Israel Standards Institute manages a register of all the profile markings used on profiles sold in Israel. However this registration does not  guarantee that these markings are registerable as trademarks.

From the evidence before the Adjudicator, due to the multitude of manufacturers and marketers of aluminium profiles in Israel, and because of the physical limitations in the range of markings that can be extruded, the difference between markings cannot be the number of extruded lines, but has to consider their position, their width, relative proportions, shape (triangular, square, rounded, trapezoidal, etc. See the list of profiles in the Israel Standards listing appended to the first Bakshi affidavit, section 11 of the Profal summation.

It is also known that the position of the marks along the profile is identical for most of the manufacturers in Israel (Talisman’s testimony page 48 lines 2-25, page 49 lines 1-3; Mr. Segals’ testimony, page 16 lines 17 to page 18 line 10, and Mr. Levin’s testimony on page 89 lines 8-10 of the protocol.

The Sight and Sound Test

In the framework if this test, the marks are considered side by side. In this instance, the marks are lines extruded on aluminium profiles, and so the visual appearance is of relevance but not the phonetics.

According to the comments noted alongside the registered marks, Alum Gold’s mark is two parallel lines; one being twice as wide as the other. Profal’s mark is two lines of equal width. In both cases, the marks protrude or are indented by 0.3 mm.

The parties disagree as to whether as to the section of the markings. Alum Gold claims that their section is trapezoidal whereas Profal’s marks are rectangular. Alum Gold is correct that from appendices 7-8 that were submitted during the hearing, and from the figures of the trademark registration one can deduce (although not with certainty) that the Profal’s trademark is trapezoidal. Profal has not denied this, and from their catalogue it is apparent that they use a trapezoidal marking as their mark (appendix 6 to the first affidavit).

No-one denies that when comparing Alum Gold’s mark with Profal’s, that Alum Gold’s mark consists of two lines, one being about half a millimeter and the second being about 1.25 mm. Although apparently these differences are not significant, we cannot ignore the fact that the product is an aluminium extrusion profile. It is not an off-the shelf product that is purchased by the consumer, but rather by craftsmen in the field. It is therefore important to identify these craftsmen, to consider the likelihood of being mislead from the perspective of these craftsmen.

The customer and type of product test

The purpose of the type of client and the type of product test is to determine whether the products under discussion are intended for the same demography, and the expertise of the relevant consumer. When the consumer base is small and has an expertise, there is less likelihood of them being misled. This was ruled in the Taam Teva decision:

The test of the client base is constructed from two complementary issues – the first, are we directing goods to the same client base? The second, how does the identity of the consumers who purchase the goods affects the likelihood of confusion? Where the consumer base is limited and expert, they are better able to differentiate between marks, and the likelihood of confusion is diminished. See Civil Action 210/65 cited above, Seligsohn page 81 and Diamond T. Motor Car Co.’s Application [1921] 38 R.P.C. 373

In this instance, the parties concur that the marks are applied to aluminium profiles in Class 6 and the parties use the same marketing channels.  Furthermore, the parties concur that the relevant consumers are aluminium stores, which are wholesalers that purchase profiles and sell them on to manufacturers of doors, windows and their frames. It is also agreed that a window or door manufacturer with a large thoughput may purchase such profiles directly from the Israeli manufacturers or importers of the profiles.

plate of bugleThe issue that the parties disagree on is whether there are other craftsmen that can be considered as relevant customers when considering likelihood of confusion, for example, entrepreneurs managing building projects, building contractors, renovators, architects, interior designers, and so on. The adjudicator is not convinced that this is indeed the case. She considers the fact that no affidavits were submitted from these is indicative that they are not relevant consumers, and in this regard she prefers the evidence submitted by Alum Gold’s witnesses and considers that the Mr. Segal, testifying on behalf of Profal, accepted this finding. Profal’s attempt to widen the customer base to include other craftsmen that will work with the profiles is not relevant, since the issue is really who will purchase the profiles. This accords with the finding in Appeal 945/06 General Mills vs. Meshubach, 1 October 2009 which considers the consumer in regards to confusing the consumer under the Trade Torts Act 1999, and in paragraph 15 of that ruling it is stated that the same considerations regarding the client are true of trademark law:

The Appellant claims that in this instance, there is no likelihood of the customers being mislead since the products are sold in their packaging in the store. The risk occurs after purchase when the snack is served loosely (in a bowl) at a party. This claim is not acceptable. It is true that the snacks are confusingly similar. It is true that they may be served loosely, but the torte of passing off is intended to prevent wrongful purchase and not to prevent confusion in situations beyond the primary or secondary sale of the product.

Thus the differences between the profile markings are only for the specific customers which are builder supply stores and large scale window and door manufacturers, who one would assume would carefully check before purchasing the aluminium profiles. A careful check of the markings on the back of the profiles will clearly show the different width of the markings on the Alum Gold frame. This was apparent in the hearing with respect to Alum Gold’s profiles (exhibits 4 and 7) and those of Profal (exhibit 8).

micrometerAs to the way for examining the markings, it is noted that even in less optimal conditions, i.e. in the store or on site, the relevant customer with experience and expertise can differentiate between profiles as necessary. Firstly, the adjudicator was persuaded that when choosing a profile, the customer does not specify the number and form of the marking lines on the back of the profile, but rather the name of the manufacturer or of the importer that he wishes to work with. (Protocol, Ms Talisman’s testimony, page 63 lines 1-10). Furthermore, in the field, whether in the workshop or on site, the craftsman has tools such as a micrometer or Vernier calipers for making accurate measurements, as testified by the witnesses of both parties. Furthermore, the profiles come from the stores or to site with attached documentation that identifies of the manufacturer. That the relevant customer can examine the marks on site without confusion between those of Profal and those of Alum Gold was testified by Mr. Stern (Protocol page 105, lines 10-14):

Adv. Drori: “Thank you. You agree with me that with a quick check in the field without measuring implements, a common check, could cause confusion between the markings of Profal and those of Alum Gold?”
Avi Stern: “No, I’ve seen this. If I had not seen this physically, I would concur that customers could be confused, but they are not.”

Thus due to the expertise of the relevant customers who are experienced in this field, there is no likelihood of confusion between the marks of Profal and those of Alum Gold.

Other considerations

We now consider other claims raised by the parties.

Profal alleges that the parties had previously had a manufacturer-distributor relationship for many years. This relationship ended when Alum Gold started importing Chinese profiles and selling them in Israel. Profal contends that Alum Gold chose markings that were similar to Profal’s to benefit from Profal’s reputation and from the same customer base that had previously bought Profal’s products. This allegation was not supported by any evidence and is therefore rejected.

Profal also alleges that some of the aluminum profiles are painted and this coarsens the markings on the back and may conceal their shape. This allegation was supported by testimony from Ms Talisman who was their expert witness (page 14 lines 15-17 of the protocol, and page 48 lines 4-7). However, in this regard Mr. Stern, Alum Gold’s witness whose testimony was considered by the adjudicator as being more reliable than that of Ms Talisman, alleged that even when painted, the relevant customer could distinguish between the profiles: Protocol page 109 lines 15-24:

Adv. Yonatan Drori: “Agree with me that once painted, the likelihood of confusion is greater?”

Avi Stern:  “I agree.”

Adv. Yonatan Drori: “If there is a millimeter wide indentation or a 1.5 mm indentation and if the profile is subsequently painted, the customer will be able to differentiate or not?”

Avi Stern:  “The customer will be able to differentiate.”

96177.pngProfal alleges that the likelihood of confusion increases since Profal is associated with the two line markings on the profiles they manufacture. This allegation was not proven. The adjudicator considers that the company that was identified with two line markings for many years was Mipromel. The first mark registered by Mipromel was Israel TM No. 96177 in 1994, and afterwards Mipromel registered additional marks: , 98178, 124974, 124975 and 124976, all of which featured two lines. Although Mipromel has ceased trading in the field a decade ago, their business, including their trademarks, was purchased by Extal who continues  to market profiles with two line marks on the back to this day, as shown by exhibit 1, Bakshi’s affidavit, Golan’s affidavit and Mardler’s affidavit. We further note that in Bagatz Klil, the Supreme Court ruled that no single manufacturer has a monopoly on the number of lines, stating inter alia:

Klil’s trademarks are indeed limited to three lines, but providing a monopoly for the number of lines would prevent others from marking with stripes as there is a limit to the number of lines that can be extruded on the back of a profile.

Profal also alleges that that customers are actually being confused by the similarity in profile marks. This confusion occurred when Mr. Calfon of Benfashi Aluminium Industries was confused in practice and received Alum Gold’s profile, and thought they were Profal’s. However, during the hearing, it transpired that Mr. Calfon did not make a mistake. His testimony was considered by the adjudicator as being unreliable and inconsistent. Under cross-examination it transpired that he had provided three separate contradictory versions of this incident. He did not respond to questions asked, and this raised doubts as to the veracity of his testimony. As to the chain of events, the Adjudicator was convinced that when the profiles reached Benfashi Aluminium Industries, Mr. Calfon realized that they were not Profal’s profiles and so asked Alum Gold to provide a Israel Standards quality certificate for the profiles he’d received. Once he’d received this certificate, Calfon decided to test the profiles in depth using various tools and claimed to find that the wall of the profile was thinner. It transpires therefore, that Mr. Calfon was never under the impression that the profiles originated with Profal and so the allegation that there was actual confusion is dismissed.

In conclusion, the adjudicator is convinced that there is no likelihood of confusion between the registered trademarks of the two parties.

Allegation of Registration in Bad Faith Contrary to Section 39(1) of the Ordinance

The Commissioner of Trademarks has the authority to cancel trademark registrations made in bad faith under Section 39(1) of the Ordinance which states that the cancellation can occur at any stage. The words of the Section:

39(1a) despite that stated in section (a), the request to cancel a mark registered in bad faith may be made at any time.

As mentioned, the party claiming that a mark was registered in bad faith has to make this allegation clearly and explicitly, and not in general terms, and must provide clear and convincing evidence to support this allegation. See cancellation request against Israel trademark No. 175594 (Infinity) Toby Shai Traders ltd. vs. Herman International Industries, 16 March 2009.

The rules governing cancellation of marks registered in bad faith are discussed in the cancellation action against Israel Trademark Numbers 184179, 182763, 182759, 182758  Roshen Confectionery Corporation et al. vs. Joint Stock Company Krasnyi Octybar et al. 16 October 2018. In this instance, we note that in general, the applicant is not required to alert the trademark office of competitors, see cancelation action against Israel Trademark No. 69909 Shlomo Eini vs. Elektrina Gutman, “Bambino” stylized trademark, 29 March 2004. However, as Judge Menny Mazuz of the Supreme Court ruled, in some situations, not revealing relevant information to the Trademark Office may be considered bad faith. See Appeal 9711/17 Chain Stores of Izhiman Coffee vs. Maazan Izhiman, 1 February 2018 and the cancelation ruling concerning Israel Trademark Numbers 112428 and 115677 , The Quigley Corporation vs. Global  Tri-Crown Trading, Inc, 25 January 2004.

From the general rule to the specific case. The Adjudicator does not consider that Alum Gold acted in bad faith in registering their marks with the Israel Patent Office. Alum Gold does not deny that they supplied Alum Gold for many years, but this is insufficient. As stated previously, the Alum Gold marks are not sufficiently similar to those of Profal to create confusion, and the adjudicator is not convinced that Alum Gold was trying to benefit from Profal’s reputation, and Profal anyway are not the only company using two lines on the back of aluminium profiles as a trademark. In this regard, Mr. Bakshi’s explanation regarding the choice of mark (Protocol page 143, line 14) is considered believable.

The adjudicator also does not consider that Profal acted in bad faith when registering their marks. Profal were not obliged to direct the examiner to registered marks of others, despite the registration establishing a rebuttable assumption of validity, unless the registered marks are identical or very similar. Requesting accelerated examination is not conditional on appending a court ruling that the desired trademark is being infringed. Profal acted in an acceptable manner when it indicated that there was a possible infringement as justification for accelerated examination. Finally, the Adjudicator does not consider that Profal acting tardily in submitting their cancellation request is indicative of bad faith.

A differentiating Character – Section 8 of the Ordinance

The guidelines for examiners reflect the f the trademark office with regards to aluminium profiles and states:

If the trademark appears to be an image of a profile, a Section 8(a) objection should issue. The Examiner will indicate that this may be removed if it is proven that the mark has inherent distinctiveness and is different from other aluminium profiles, including those registered by the Israel Standards Institute, or if it is shown that the mark has acquired distinctiveness under Section 8(b) of the Ordinance.

The adjudicator examined the registration files for these marks and found that both were registered legally, No evidence has been brought to show that the Examiners erred when considering the differentiating features of the marks of both Profal and of Alum Gold.

The Adjudicator considers that both Alum Gold and Profal are known in the aluminium profile field, and their names are known to a greater or lesser extent. However, this does not indicate the amount of distinguishing characteristic in their respective marks, and thus Alum Gold’s allegation that Profal has less of a reputation is rejected as unsubstantiated. Similarly, Profal’s allegation that Alum gold’s profiles are inferior is rejected as unsubstantiated. It would have been better had these allegations not been raised by the parties.

Having determined that both parties had acted equitably in registering their marks, the allegations of unjust competition contrary to sections 11(6) and 12 of the Ordinance are also rejected.

In the circumstances, both cancellation requests are denied and Alum Gold’s trademark registration numbers 247031 and 247032 and Profal’s registration trademark number 276383 remain valid.

No costs are awarded to either party.

Ruling by Ms Yaara Shoshani Caspi concerning the cancellation requests against Alum Gold’s trademark registration numbers 247031 and 247032 and Profal’s registration trademark number 276383, 154 November 2018

COMMENT

I was less than surprised to learn that Profal had been a distributor of Alum Gold’s profiles. Typically these cancellation proceedings are indicative of a business relationship that has soured.

Whilst extrusion lines are a strange sort of trademark, it is worth noting that the earliest trademarks known were marks hammered onto armor and makers marks on silver goods. Aluminium profiles cannot reasonably be marked by the manufacturers in any other way.

There are only so-many marks that can be extruded on a back surface of a profile. Thus marks will have some similarity in that they have to be parallel protrusions or indentations that run the length of the profile.

It is not surprising that both parties claimed to have used their trademarks earlier, and to have accused the other party of copying their marks. What is difficult to accept is that each contends that their mark is clearly different from the one registered by the other party, at the same time arguing that the other party’s mark is confusingly similar to their registered mark.

So, after a long protracted mutual cancellation proceeding, the Adjudicator of IP has ruled that both cancellation proceedings are rejected. Clearly both sides have wasted time and resources that merely enriched their lawyers. This is not a rare state of affairs for contentious IP issues between rivals in competitive markets.  One assumes that mediation would have been a better route.



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

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