Israel Trademark No. 276629 for “SiTOZEN Professional” was registered by an experienced beautician called Zehava Sade in Class 3 for cosmetic products where the active ingredient is hyaluronic acid,, night cream, eyes cream, facial serum, facial moisturizer, moisturizer face mask, facial soap, facial peeling, skin Lightening soap, peeling base Cream, soothing Spray- Foot, cosmetic New skin cream, skin Pigmentation Facial Mask, anti Ageing Cream, peeling perform cosmetic products, pomegranate soap, tomato mask, face toner, facial cleanser, eye makeup remover, protective eye cream, active serum, day cream, spray prevents body odor, cream energizing and relaxing, shampoo without salt, Moisturizer & Nourish Cream, hair serum, hair mask, gel Scrub hands and feet, body lotion, Foot cream cracked skin repellent odors, Foot Cream protects and restores, Nail cuticle solvent, soap for oily skin, and in class 5 for Highlights drops, Dryer wounds, Ointment foot fungus treatment, Treatment cream redness and irritation, Liquid nail fungus treatment, Gel for the treatment of warts, Therapeutic foot cream, Liquid dissolves nails, Gel for the treatment of warts, Therapeutic foot cream, Callus gel.
Levona Lab LTD is a company that manufacturers and sells cosmetics and manufactures hair treatment preparations under the name CiTOZEN, which they have a trademark on. They filed to have Ms Sade’s mark canceled.
In March 2014 the parties had a business relationship which included an agreement that Levona Lab would obtain the regulatory approval from the Ministry of Health and would manufacture the product for Zehava Sade. The agreement also specified the breakdown of revenue between the parties. On 27 March 2014, a second agreement was reached, under which the registrant would work as a marketing manager for Levona Lab, and set down the conditions of this employment.
As it transpired from the cross-examination of Mr Baum, Ms Sade’s employment was terminated in August 2014. Ms Sade sued in the employment courts and a settlement was reached on 15 June 2019.
The trademark application for SiTOZEN was signed by the Applicant in June 2015, but was actually filed on 22 July 2015 together with a request for accelerated examination on the grounds that there was a third party was using the mark. The mark was allowed and published for opposition purposes on 29 October 2015 and registered on 3 February 2016. On 24 March 2017 the cancellation proceeding was submitted.
(It appears that the marks SiTOZEN and CiTOZEN are both variants of chitosan, which is a polymer that is used in various cosmetics).
The claims of the parties
The main claim of the party requesting cancellation is that the application for SiTozen Professional was filed in bad faith after Ms Sade become aware of the CiTOZEN mark whilst working for Levona-Lab and was trying to benefit from their reputation with a confusingly similar mark.
Ms Sade denied knowing about Levona-Lab’s CiTOZEN mark at the time she worked for the company and further claimed that Levona-Lab had never used the mark and that the production licenses were never published. Ms Sade went on to state that she Levona Lab used the word mark as transliterated into Hebrew (ציטוזן) and that to the extent that they had a reputation, it was for the Hebrew Mark.
A further claim of the mark owner was that there was no similarity between CiTOZEN and SiTOZEN Professional, and so the claim of it having been filed in bad-faith was baseless.
In the circumstances, Commissioner Ofir Alon could only conclude that the name CiTOZEN and SiTOZEN are confusingly similar and due to the laudatory and generic nature of the term professional and the audible similarities of the marks in the same field, there was a likelihood of confusion. Furthermore, Ms Sade was well aware that Levona-Lab used the mark (remember, she had requested accelerated examination based on competitor using the brand. There is no statute of limitation for cancelation of marks registered in bad faith; see Section 39(a1) of the Ordinance and Article 6bus of the Paris Convention:
“(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith”.
See also the 98239/17 Appeal (Habitat ruling).
The Commissioner ruled the mark invalid and in the circumstances and based on the evidence and time spent, etc. the commissioner ruled costs of 45,000 NIS against Ms Sade.
Cancellation Action against Israel TM No. 276629
Categories: bad faith, cancellation proceedings, employee, inequitable behaviour, Israel Trademark, trademark, trademark cancellation proceedings, החלטת רשות הפטנטים, סימן מסחר, סימני מסחר, סמני מסחר, קניין רוחני, קנין רוחני