The Nemiroff Intellectual Property Establishment has submitted a request for the cancelation of the competing marks proceeding between their Israel Trademark Application Numbers 290474, 290450, 294073 ו- and 304180 and RAM Development Associates LLC’s trademark Application Number 298620.
Nemiroff claims that it was wrong to institute a competing marks proceeding under Section 29 of the Trademark Ordinance 1972 in this case since Nemiroff owns some 50 previously registered Israel trademarks that include the name Nemiroff, and the mark is a well-known mark in the meaning of term as used in Section 1 of the Ordinance.
In accordance with the Commissioner’s decision as given on 8 November 2018, Ram noted that they had no problem with coexistence, since their mark is visually, conceptually and fontally different from that of Nemiroff’s. Nemiroff’s marks are for alcoholic beverages whereas Ram’s marks are for cigarettes, cigars and tobacco. Thus Ram agrees to stopping the competing marks proceeding.
Contrary to Ram’s position, Nemiroff considers that Ram’s mark is not eligible for registration due to Nemiroff’s previous marks, particularly 186866 in Class 33 for the word mark NEMIROFF.
The requested Nemiroff Israel Trademark Application Nos. 290474 and 290450 were submitted on 8 August 2016. Israel Trademark Application No. 294073 was submitted on 22 December 2016. Israel Trademark Application No. 304180 was submitted on 298620. Before being allowed, RAM Development Associates LLC’s Israel Trademark Application Number 298620 was submitted on 26 July 2017.
To illustrate the arguments the following table summarizes the pending Nemiroff Vodka applications:
Ram’s trademark application no. 298620 for the word-mark Nemiroff was filed on 26 July 2017 in class 34 and covers:
“Cigars, cigarettes; tobacco, raw or manufactured, namely, cigars, cigarettes, cigarillos, little cigars, cigars with pre-cut ends, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, tobacco substitutes not for medical purposes, liquid tobacco and cigarette liquids, smoking spices, electronic cigarettes; smokers’ articles, namely, cigarette paper and tubes, cigarette filters, tobacco tins, cigarette and cigar cases and ashtrays not of precious metals, their alloys or coated therewith, cigar lighters electric and non-electric, cigar and cigarette tubes, cigar and cigarette cases, humidors for tobacco products; smoking pipes, pocket apparatus for rolling cigarettes, lighters not of precious metals, matches.”
Nemiroff’s registered trademark no. 16866 for the word Nemiroff in class 33 was submitted on 24 July 2006 and registered on 7 August 2007 and covers:
“Alcoholic beverages, namely vodka and beverages containing vodka; all included in class 33.”
Ram’s mark is identical to Nemiroff’s registered mark, and the only difference is the type of goods covered. Nemiroff’s mark is for vodka and drinks containing same, and Ram’s application is for tobacco products.
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 is clear that the Commissioner has the discretion to institute a competing marks procedure. So the question is really one of whether the marks are registerable without a competing marks procedure being held to determine who has the first right of application.
Nemiroff claims that there is a lack of symmetry between their application and Ram’s. Were Ram’s mark not to have been filed, they submit that their (Nemiroff’s) mark would certainly be eligible because there is inherent distinctiveness and no registered mark that is confusingly similar. However, if Ram’s mark is examined it will at least raise a Section 11(9) objection against Nemiroff’s marks in general and their registered word mark no. 186866 for Nemiroff in particular.
From the evidence submitted by Nemiroff, it transpires that they have 50 separate Israel trademarks that include the word Nemiroff for vodka and other alcoholic beverages. In the office actions against the current applications that issued prior to Ram’s application being submitted, there was not a single substantive objection prior to the competing marks proceeding being initiated. So Nemiroff are correct that their marks would be registered were Ram’s application not submitted.
Nemiroff submits that even if Ram were to be able to overcome objections under section 11(9) and 11(14), then the best they could hope for would be coexistence of their mark with Nemiroff’s.
Ram’s attorney (Dr Shlomo Cohen Law Offices) agreed that Nemiroff’s attorneys (JMB Davis Ben-David LTD) should be offered the possibility that Ram’s mark be examined first, prior to the competing marks proceeding, such that the competing marks proceeding be held only if Ram manages to overcome the section 11(9) and section 11(14) objections, as has occurred in similar instances such as regarding freezing the Competing marks proceeding concerning Israel Trademark Application Numbers 269997 , 269996, 269160, 269159, 265729 published on 24 January 2016.
Nemiroff objected to this, since they contended that there was no reason to halt registration of their mark, until Ram’s was examined, when the result of the Examination is knowable in advance, and there is no possibility of Ram’s mark being considered preferable.
After weighing up the relevant considerations in this instance, Commissioner Ofer Alon concluded that Nemiroff’s claims are correct, in the special circumstances in question. Since the word marks are identical, the only way for Ram’s mark to be registerable is to successfully claim that alcohol and tobacco products are different types of goods and that Nemiroff’s products do not have a reputation. If these conditions are met then the two marks would be able to coexist, and so there is no reason not to cancel the competing marks proceeding and to allow Nemiroff’s marks.
Ruling by Ofer Alon concerning Competing Marks 290450, 294073 , 290474, 304180 and 298620 for Nemiroff, 28 March 2019