Israel trademark no. 264763 to Isaac Hadad is shown alongside.
The mark covers goods in Class 3 as follows: Cosmetic soaps; cream soaps; liquid soaps; perfumed soaps; soaps for body care; soaps for personal use; essential oils; cosmetic creams for skin care; hair care creams; hair care preparations; hair care lotions; lotions for face and body care; nail care preparations; body and beauty care cosmetics; cosmetic creams; cosmetic preparations; cosmetics; body oils; hair coloring preparations; hair styling preparations; hair shampoos and conditioners; baby oils; shampoos for babies; bath and shower gels and salts not for medical purposes; bath oils; bath soaps; bath foam; massage oils; cosmetic massage creams; sun screen preparations; sunscreen creams; sun-tanning oils and lotions; sun block preparations; tanning and after-sun milks, gels and oils; beauty gels; beauty creams; body creams; face creams for cosmetic use; beauty lotions; body lotions; skin lotions; make-up; cosmetics and make-up; make-up for the face and body; make-up removing preparations. Products with Dead Sea minerals; all included in class 3.
Sea of Spa owns the Black Pearl brand and has word marks for Black – Pearl and Black Diamond in class 3 and also a couple of graphical marks showing a black pearl.
Sea of Spa opposed Hadad’s mark.
The Statement of Case was submitted in May 2016 and the Opposer’s evidence was filed in August 2016. The Applicant’s evidence was filed in December 2016 and the Opposer’s counter response was submitted in March 2017.
On 13 February 2019 a hearing was held wherein the parties were cross-examined on their evidence, and then summations were submitted on 21 July and 20 August 2019.
The Opposer’s Claims
Sea of Spa Laboratories ltd was founded in 1996 by Mr Chanan Glass. The company manufactures and markets cosmetics, dermatological preparations and beauty treatments that are based on Dead Sea components. The Opposer claims that it is a leading company in the field, and that its products are sold in Israel and abroad.
The Opposer alleges that the Black Pearl products are their premier line, established in 2004. The company has spent over half a million Shekels in promoting the line, and has generated sales of excess of 86 million Shekels.
The main claim of the Opposer is that the requested mark is confusingly similar to their BLACK PEARL marks. The Opposer claims that the applicants use the mark BLACK MAGIC and intend to use it, without the DO IT BETTER slogan, or with the DO IT BETTER slogan printed small, so that it is not noticed, and this makes the marks even more similar. Thus when comparing the marks, the term BLACK MAGIC should be compared with BLACK PEARL.
The Opposer considers the term BLACK has no meaning with regards to products consisting of water and salt, and thus the Applicant’s choice of this word is not random, but it is designed to link their goods to those of the Opposer. The Opposer emphasizes that the background to the mark is black, as is the background to the BLACK PEARL mark.
The Applicant’s mark and the Opposer’s mark are used for similar products for similar clients, and use the same distribution channels. The Applicant sells both their own goods and the Opposer’s BLACK DIAMOND goods via the same website.
The consumer is likely to see the goods in juxtaposition , which strengthens the similarity between them.
The Opposer considers that the mark cannot be registered due to it lacking inherent distinctiveness contrary to Section 8(a) of the Ordinance, as being against the public interest contrary to section (11(5), as creating unfair competition contrary to Section 11(6), as being confusingly similar contrary to Section 11(9) and that the Opposer’s mark Is a well-known mark under Sections 11(13) and 11(14) of the Ordinance.
The Applicant’s Claims
The Main claim of the Applicant is that the marks are not confusingly similar. The word BLACK appears in many trademarks relating to cosmetics in general, and to Dead Sea products in particular’ both as a descriptive word for describing the characteristics of the mark, such as with reference to Dead Sea cosmetics manufactured from black mud, and simply for branding purposes as part of a trademark, such as with BLACK PEARL and BLACK MAGIC.. The Applicant considers that their mark should not be refused merely because it includes the term BLACK which should remain available to all.
Furthermore, there is nothing between the marks that creates unfair competition or misleading., since the BLACK PEARL mark itself was registered whilst there was a registered trademark for BLACK MAGIC for goods in class 3 (trademark number 160910 which subsequently lapsed due to not paying the renewal fee). The applicant considers that if a registered trademark for BLACK MAGIC alone was not grounds for preventing registration of BLACK PEARL, a registered trademark for BLACK PEARL should not prevent registration of a mark for BLACK MAGIC DO IT BETTER.
The Opposer’s evidence includes a main affidavit and a second affidavit in response by Mr. Avtar Glam, the manager of the Opposer. The evidence included lists of the Opposer’s goods, photographs of the products and a catalogue of the products that carry the BLACK PEARL mark; a promotional film that appears in YOU TUBE and on the Opposer’s website, photographs of advertising hoardings for BLACK PEARL and for פנינה שחורה which is Black Pearl in Hebrew, extracts from the Opposer’s website and a print-out from the Trademark Office registration.
Also provided were a number of receipts from 2011-2014 for advertising expenses, but these did not clearly relate to the BLACK PEARL line, did not include a total spent on advertising. Details of sales of the BLACK PEARL and Excel tables from 2014-2016 were submitted, without a total and without any sort of support for the statistics tabulated. No such information was supplied for 2011-to 2014.
Together with this evidence, the Opposer submitted a report of entries to their website ww.seaofspa.com, from 1 January 2015 to 18 June 2016, without relating to the BLACK PEARL line. Also submitted were search results for the BLACK PEARL trademark which lead to the Opposition, but these were actually for פנינה שחורה- BLACK PEARL in Hebrew.
The Applicant’s evidence included a statement from Mr. Itzhak Hadad and appendices. These included photos of the gods with the mark and various pieces of evidence that show usage of the word BLACK for cosmetics, that are not used for describing black products, but simply for branding purposes, and also use of the word black with reference to Dead Sea products related to black mud. The applicant also submitted the trademark registration of BLACK MAGIC (160910) in class 3, which has now lapsed but was registered until 2013.
DISCUSSION AND RULING
The Opposer requested staying the opposition as the Applicant was in bankruptcy proceedings. This request was previous addressed in interim rulings from 19 May 2019 and from 3 July 2019 and the Commissioner saw no reason to reconsider the issue. Briefly, the receiver and the courts saw no reason to stay the trademark opposition, and so the request is rejected a third time.
The parties detailed a complicated relationship with on-going proceedings in different courts. The Commissioner considers these issues to be almost completely irrelevant to the issue of trademark registration which is limited to the question of whether the requested mark is registerable and more specifically, whether the marks are confusingly similar.
The Likelihood of Confusion
The issue is whether BLACK MAGIC DO IT BETTER and BLACK PEARL are confusingly similar.
As ruled in Civil Case 563/11 ADIDAS SAOMON A.G. vs. Galel Yassin, this should be determined by considering the marks as a whole, independent of the actions and behavior of the parties:
When applying the tests, it is right to remember that the comparison is between the marks in their entireties and not between specific elements thereof. See Taam Teva 451, Appeal 6658/09 Multilock ltd. Vs. Rav Bareakh (08) Industries ltd. 12 January 2010. The test should concentrate on the confusing similarities between the marks, in contradistinction to ‘passing off’ where the infringer’s actions as a whole are considered. See 1400/97 Piquante Food Industries(Israel) ltd vs. Osem Food Industries p.d. 51(1), 310-313, 1997.
In a similar manner D Kitchin et al, wrote in paragraph 11-046 Kerly’s Law of Trade Marks and Trade Names (London, 16th ed., 2017):
“Similarly, it is not enough that the likelihood of confusion is caused by some other factors external to the marks, such as associated advertising materials or packaging. “[C]ircumstances prior to, simultaneous with or subsequent to the use of the sign may be relevant to a claim for passing off … but they are not generally relevant to a claim for infringement under Art.9(l)(b)”
Thus, allegations of “infringing acts” are irrelevant to the matter. Nor are speculations that the Applicant intends to use the mark in one manner or another after it is registered, nor are similarities between packaging or the fact that both companies manufacture Dead Sea cosmetics.
Such allegations are appropriate for a court case relating to passing off, if any such case is filed, but are inappropriate for a comparison of the marks as submitted to the register, and not to how they are used in practice.
Prior to considering the appearance and sound of the marks, it is noted that the nature of the goods, the consumers and distribution channels are all very similar.
The Appearance and Sound Test
As ruled in the case-law, the question of confusing similarity between marks should be tested by the tripe test consisting of: (i) the appearance and sound of the mark, (ii) the type of goods and customers, and (iii) any other relevant considerations (see 9191/03 V&V Vin SPIRIT Aktiebolaf vs. Absolut Shoes, p.d. 58(6) 869.
The two marks were compared side-by-side.
In this instance, the Commissioner does not think much weight should be given to the styling as the BLACK PEARL Mark is not stylized and thus has wide protection, and the words are the main element of the BLACK MAGIC mark. (this can be compared to paragraphs 69 and m70of the Opposition to Israel Trademark No. 257489 from 31 January 2019.
The only common element between the marks is the word BLACK, where the rest of the applied for mark is MAGIC which is very different from PEARL, which is the rest of the Opposer’s mark.
The Commissioner rejects the Opposer’s allegation that use of the word BLACK together with another English word is sufficient to create a visual and phonetic similarity. The words Pearl and Magic are very different and when considered in their entirety, there is no similarity between the marks. The Commissioner does, however, agree with the Opposer that little weight should be give to the phrase DO IT BETTER, which is less prominent, and so will be considered as les significant by consumer.
The Opposer claims that the word BLACK is insignificant with respect to Dead Sea products, since the famous Dead Sea mud is black, but the Commissioner disagrees with this claim., but does not find it would help the Opposer anyway, since the marks are registered for cosmetics in general, and are not limited to Dead Sea cosmetic products. The word black is a dictionary term that indicates a color, and it should be available for marks in general and for cosmetics in particular, and no single trader deserves a monopoly for the word. It is noted that the color black is widely used to indicate luxury and premium goods,. In this regard, the Supreme Court’s words in Appeal 7836/09 J.O.P. Sun Investments ltd. et al. vs. Naama Menashe (13 December 2009):
With this, there are some names which despite not being linked specifically to a field, are by their nature, not random and these words have a universal fragrance that make it difficult for a person to monopolise to the exclusion of the public. An example of this type of mark is GOLD which may be considered descriptive, even if not used for products made of the precious metal, since the term is used to imply the highest quality or standard (see Appeal 4322/09 Sh. A. Format Trade and Services (1994) ltd. Vs A Sh. Snir, Paragraph 3, 3 August 2009.
In this instance where the main, if not the only similarity is the descriptive word BLACK, accepting the Opposer’s arguments would be giving a monopoly for the work BLACK, but this word should be left available to the public.
As to the sound of the mark, the Commissioner finds the other word, PEARL or MAGIC as dominant over the word BLACK and so the marks do not sound the same.
As to the other considerations, the mark BLACK MAGIC has different implications from the BLACK PEARL mark. This difference will help distance the consumer from associating the marks.
The Opposer claimed that there was actual consumer confusion between the products, but did not provide evidence that this was indeed the case. Even had they done so, the Commissioner would have been inclined to see the confusion was the result of similar packaging and not of similar marks.
Well Known Marks
The Commissioner does not consider that the Opposer has proved that the mark is a well-known mark in the meaning of the Ordinance. Furthermore, the Applicant’s claim for having invested half a million shekels in sales in 2004 is not supported by evidence. The invoices appended to Mr. Glam’s affidavit do not add up to the claimed sum, and do not relate specifically to products carrying the BLACK PEARL mark. No other evidence was provided that the mark was so familiar to the public that it can be considered a well-known mark. It is noted that the burden of proof that a mark is well-known is in the party claiming this to be the case. In the relevant decision Civil Action 5066/10 Shlomo A Angel ltd vs. Y and A Berman ltd, the following was ruled:
To show that there is a reputation, the one claiming this has to show that in the specific instance, the name, mark or description received public knowledge, and they were used to seeing them as indicating that the work or products are of the plaintive.
This is useful to help determine if a trademark is well known.
That said, even were the BLACK PEARL mark considered to be a well-known mark, it would be necessary at least for the public to link the opposed mark with the Opposer, and this is not sufficiently proven to be the case.
The Commissioner did not find the other claims of the Opposer, which were all based on allegations of misleading, sufficient to change his mind from concluding that the marks were all registerable. In light of the above, the Opposition is rejected. The mark will be registered and the Opposer will bear legal costs of 35,000 NIS to be paid within 30 days.
Black Pearl vs. Israel trademark no. 264763 for Black Magic Ruling by Commissioner Ophir Alon, 19 November 2019.