An Israel trade-mark application for HI-Q was submitted by the SANGSIN BRAKE CO., LTD for: “Cars for passengers (automobiles); air bag (safety device for automobiles); horns for vehicles; motor hoods for vehicles; bumpers for vehicles; car frames; conveyors for vehicles; steering wheels for vehicles; torsion bars for vehicles; safety belts for automobiles; rear mirrors for automobiles; disks for automobile disk brakes; drums for automobile drum brakes; windscreen wiper quills for automobiles; windscreen wipers for automobiles; windscreen wiper booms for automobiles; windscreen wiper booms for automobiles with cleaning fluid injecting functions; diesel engine for land vehicles; rubber belts for land vehicles; operation chains for land vehicles; gear teeth for land vehicles; transmissions for land vehicles; disk brakes for vehicles; band brakes for vehicles; brake linings for vehicles; brake for vehicles; brake shoes for vehicles; brake segments for vehicles; brake forks for vehicles; brake pads for vehicles; conical brakes for vehicles; stop with springs for vehicles (shock absorber springs for vehicles); laminated springs for vehicles (suspension springs for vehicles); couplers for land vehicles; electric retardants for automobiles; auxiliary brake for automobiles; air disk brakes for automobiles; gauges for automobiles; regenerative brake for automobiles; all included in class 12.”
When the Application came up for Examination, the Examiner considered that allowing it would be contrary to Section 11(9) of the Trademark Ordinance 1972 since Goodyear Dunlop Tyres (Tires) held two trademarks for HI-Q: 104727 and 104728 respectively.
The Applicant is a South Korean Company. There is an agreement between them and Goodyear for co-registration of the marks that regulates the worldwide rights.
The local representative clarified that there was no overlap between the goods of the parties in question. The registered marks for Goodyear cover tires, whereas SANGSIN BRAKE CO‘s marks are for car parts other than tires, such as brake disks, as specified in the list of goods.
Furthermore, the distribution channels are different since SANGSIN BRAKE CO supplies spare parts to garages that mend and maintain vehicles, while Goodyear supplies puncture repairers that also replace tires.
On 20 March 2019 the Applicant submitted a letter from Goodyear that supported this claim of co-existence.
The Israel representative stated that there was never a confusion in the relevant markets and the products had coexisted for a long time, both in Israel and abroad. The products have been available in Israel for seven years.
From the above, the Deputy Commissioner Ms Jacqueline Bracha concluded that there was no likelihood of confusion and allowed the mark to be registered.
Whereas both companies make replacement car parts, it is true that tire fixing and replacement is handled by businesses that do little else, and regular vehicle maintenance garages don’t change tires or mend punctures. Still, puncture repair places do often carry a limited supply of spare parts. Windscreen wiper quills for automobiles and windscreen wipers for automobiles are black rubber components that some puncture repair places might stock. I suspect that there is at least one garage in Israel that can prepare cars for annual tests and replace the brake pads and the tires if necessary.
However, I expect that Goodyear-Dunlop tires are marked with one or the other brand names in addition to the HiQ mark.
The mark Hi-Q is best known in Israel as the study aids and course organizers for cribbing for psychometric tests which more or less serve the same purpose as SATs in the US.
Knowing that potential students from poorer areas and underprivileged communities tend to have worse teachers in school, parents less able to help and are less likely to have private lessons, to level the chances of minorities and those from poorer families to get into colleges, the psychometric tests were developed, Once an indication of raw intelligence, now potential students study for these and the same organizations that set the tests sell study aids and run courses in succeeding in them. I think it was the new Zealander Clive James who once pointed out that a high IQ is merely an indication of having a peculiar talent for being able to select the odd one out in multiple choice tests. That as may be, one imagines that both potential students and car mechanics are unlikely to be confused between study aids and car parts.