Bad Boyfriend LLC owned Israel Registered Trademark No. 241702 for BAD BOYFRIEND. The mark covers cosmetics, soaps, perfume, fragrances, non-medical skin and face formulations and hair formulations.
The trademark application was submitted in October 2011 and allowed on 31 December 2012. The mark published for opposition on 31 January 2013, and as no opposition was filed, was registered on 6 May 2013.
On 14 December 2018, Carolina Herrera Ltd. requested cancellation of the mark on grounds of lack of use under section 41(a) of the Trademark Ordinance, alleging lack of use in the previous three years.
Section 37 of the Ordinance gives the owners two months to fight a cancellation request.
On 18 July 2019 the Israel Trademark Office wrote:
The owner of the Trademark did not respond to the cancellation request, within three months from the Israel Patent and Trademark Office receiving the cancellation request. The Applicant for cancellation is therefore given two months to submit his evidence.
In a ruling of 26 November 2019, the mark owner was ordered to provide evidence of usage, if any, in the month prior to the filing of the cancellation request. The owner did not respond, so Dr Roya Israel (apparently the new adjudicator) has ruled on the basis of the evidence submitted by the Applicant for Cancellation.
Section 41(a) of the Ordinance states that in addition to that stated in regulations to 38 to 40, anyone can request cancellation of a mark on the grounds of lack of genuine intent to use the mark and lack of use during the three year period prior to the request for cancellation being made.
Under Section 41(a), a mark will be cancelled if it is proven that it was not used for the goods for which it was registered, which In this instance, is between 14 December 2015 and 14 December 2018, which was when the request for cancellation was submitted.
In a cancellation proceedings, the adjudicator should consider three questions, as stated by Judge Vitkon in Bagatz Nicholas Overseas vs. Preminger, 6 January 1975.
“The first question is whether or not there was usage of the mark in the relevant period. If there wasn’t, then the second question is whether or not there were particular trade reasons that prevented usage of the mark. If there were no such reasons, the third question is whether despite this, the Commissioner has discretionary grounds for not canceling the mark.
See section 5 of Appeal 7038/04 Miss Elle High Fashion for Women 1992 vs. Pagotte Belkleidungsf Abrik Paula Got Tesdiener-G, 11 March 2007.
In this instance, the requester for cancellation submitted an Affidavit of me Binyamin Mazar who is a private investigator. In Section 4 of his affidavit, Mr. Mazar stated that on 15 November 2019 he was requested to investigate if there was usage of the BAD BOYFRIEND mark in Israel over the previous year, for cosmetics, etc. Mr. Mazar did an Internet search after the mark, and made inquiries in pharmacies and other outlets for cosmetics and tried to contact the owners of the registered mark.
Mr. Mazar found no record of usage in Israel, and no Hebrew language results. The search was repeated in November 2019 with the same result.
Mr. Mazar also looked for usage of the mark in the month prior to the filing of the application, in 13 stores in different regions and none of them stocked goods carrying the mark. He was unable to reach the mark owner and noted that the mark had been abandoned in the US.
The evidence was unclear regarding when the research was done, and Mr. Mazar apparently covered the period of three years up to 15 November 2018, but not the month prior to the request for cancellation being filed, i.e. between 15 November 2018 and 14 December 2015. Mr. Mazar’s affidavit states that he conducted his survey of stores during the month up to 14 December 2015, without stating exactly when. The adjudicator was not convinced that the search was conducted as close as possible to the filing of the cancellation request. Whilst it is clear that Mr. Mazar did some internet searches in November 2019, it this is not sufficient to make up for when the stores were visited.
The requester for cancellation is supposed to provide evidence to prove a negative, i.e. lack of usage in a certain period. This is more difficult than to show positive usage, however the Applicant for cancellation is expected to do as thorough a job as possible, and is expected to state when he visited the stores and to provide print-outs for the search that show exactly when it was done, and not to rely on unclear general statements to the effect that searching was done during the month prior to…
In light of this, and due to the slim chance that there was some usage of the mark during the final month prior to the submission of the cancellation request, the adjudicator gave the mark owner an additional opportunity to show usage of the mark during this last month, contrary to regulation 71(a)a of the Trademark Regulations.
The Adjudicator thought that deviating from regulation 71(a)a was justified in light of regulation 71(a)b which states that the Commissioner will not cancel a mark unless he is certain that it is the correct thing to do. Thus to ensure justice was served, it was seen fit to deviate from the procedure, and doing so did not adversely affect the requester for cancellation and was proportional in this instance.
Nevertheless, despite the additional opportunity given to the mark holder to complete the evidence, the mark holder did not respond and did not provide any contrary evidence to show usage. There is absolutely no evidence of any usage in the three years prior to the cancellation request being submitted, and also no evidence for extenuating circumstances justifying the lack of use were submitted.
In light of lack of evidence of usage during the three years prior to the cancellation request, and with no response filed by the mark owner, the adjudicator accepts the cancellation request and orders that the mark be deleted.
Because the mark owner took no action to prevent this unnecessary proceeding which incurred legal expenses, the mark owner will pay 8000 Shekels to the requester for cancellation within two weeks of today.
Cancellation proceedings of Israel Registered Trademark No. 241702 to Bad Boyfriend LLC, ruling by Dr. Roya Israel, Adjudicator of Intellectual Property, 23 December 2019.