Chipsico – a Competing Marks Proceeding Where Both Marks were Refused

July 11, 2017

267474On 13 August 2014, the New Dubak Natsha ltd filed Israel trademark application no. 267474 in class 29 for chips (potato crisps). The stylized mark is shown alongside, and reads CHIPSICO Batates Modalaah – (Chipsico Crinkle-Cut Potato Chips).

The same day, the Halawani Industrial Company ltd filed two trademark applications for coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitute, flour and grain products, bread, wafers, cakes and sweets, honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar, tomato paste, seasoning mixtures, spices, frozen foods, snacks and crackers. The first application was Israel Trademark No. 267770 CHIPSICO and the second, 267772 was for شيبسيكو, which is Chipsico written in Arabic.

crinkle cutThe trademark department considered the marks as being confusingly similar and the parties failed to reach an agreement, so on 8 May 2016, a competing marks proceeding under Section 29 of the Ordinance was initiated and the parties were invited to present their evidence.

New Dubak Natsha ltd submitted: Read the rest of this entry »


Totachi

July 6, 2017

277424Totachi Kougyo Co ltd submitted Israel Trademark Application Number 277424. The Application was in classes 4, 7, 9, 11 and 12 and is shown alongside. The Application is the national phase of an International Trademark under the Madrid Protocol. On 6 December 2016, the mark was allowed and under Section 56vi of the Trademark Ordinance, the International Bureau was notified with details about the deadline for Oppositions.

On 27 March 2017, Total SA filed an Opposition in accordance with Section 24(a) of the Trademark Ordinance 19722 and regulation 35 of the 1940 regulations. Consequently, on 29 March 2017, the International Office was informed, together with the deadline for responding.

The Applicant had two months, until 29 May 2017 to respond to the Opposition. However, until the date of this decision, 18 June 2017, no response was received from the Applicant. On 11 June 2017, the Opposer requested that the Israel Patent and Trademark Office note that the since no timely response was received, the Opposition should be accepted and the mark considered cancelled.

The Adjudicator of Intellectual Property, Ms Shoshani Caspi, accepted this request. Consequently the mark is considered withdrawn and the International Bureau will be duly informed. No costs are awarded.

Decision re Israel Trademark Application 277424 to Totachi Kougyo Co ltd, 18 June 2017


Cancellation of Suprene Mark

July 6, 2017

LSUPRENEIsrael trademark no. 245038 is for the stylized word mark SUPRENE in class 17, for Synthetic rubber; styrenebutadiene rubber; butyl rubber; polyisoprene rubber; polychloroprene rubber; isobutylene-isoprene rubber; ethylene-propylene rubber; ethylene-propylene diene rubber; all included in class 17.The mark is owned by SK Global Chemical Co. ltd, a Korean company.

Dynasol Elastomeros submitted a request to have the SUPRENE mark cancelled.

The request for cancellation was submitted under Section 39a of the Trademark Ordinance 1972. The Statement of Claims and Counterclaims, and evidence were filed, but the parties decided to forgo the hearing, and requested that the adjudicator, Ms Shoshani Caspi, ruled on the basis of the materials on file.

SolpreneThe requester for cancellation, Dynasol Elastomeros, owns Israel trademark no. 242409 for SOLPRENE, registered on 6 May 2013.  SK Global Chemical Co. Ltd tried to oppose that mark, but left it too late by two days so the Opposition was ignored.

Dynasol Elastomeros’ Claims and Evidence

Dynasol Elastomeros claims to be a leading worldwide manufacturer of synthetic rubber that was founded in 1999. Due to their enormous investment made in marketing and promoting their trademarked goods, their competing mark has acquired a distinguishing character and is identified with the goods that are stamped with the mark. Thus the mark has become well-known and identified with Dynasol Elastomeros and their marks.

Dynasol claims that SK Global’s mark should be cancelled since it is confusingly similar in appearance, phonetically and conceptually with their earlier, registered mark.  Since the two marks are used with respect to similar goods and consumers, this could confuse the customers or result in them thinking that there is a commercial connection between the two groups of products.

In summary, Dynasol claims that the mark is unacceptable due to Section 8a as it lacks distinguishing nature; is unacceptable under Section 11(9) as it confusingly similar to Dynasol’s mark and under Section 11(6) as damaging to Dynasol’s reputation; under section 11(5) as selected in bad faith, and against the public order, and under sections 11(13) and 11(14) as being confusingly similar to a well-known mark. To support their allegations, Dynasol submitted an Affidavit by their legal counsel  Mr. Ramon Felipe Estrada Rivero .

SK Global Chemical’s Claims and Evidence

Supremes.pngSK Global Chemical is a Korean manufacturer of oils and petroleum which is the basis of the petrochemical industry, such as ethylene and propylene. They claim to be a leading manufacturer of rubber which is marketed under the SUPRENE mark.

SK Global Chemical has been using the SUPRENE mark since 1991 and it is used in 30 countries, including Israel. The mark is registered in these countries and a large marketing budget has been invested in promoting the mark. Consequently, the SUPRENE mark is identified with SK Global Chemical’s products. Consequently, the SUPRENE mark is well-known in Israel, whereas Dynasol’s SOLPRENE mark is not well known in Israel.

SK Global Chemical claims that there is no confusing similarity between their mark and that of the Applicant since the marks are visually and audibly different. They deny allegations of inequitable behavior in choosing their mark, and accuse Dynasol of choosing their mark in bad faith in an attempt to benefit from the Suprene reputation.

According to SK Global Chemical, since Dynasol are trying to cancel an issued mark, the burden of proof is on them to show that the registration was invalid. Their counter-claims were supported by an affidavit from their president, Mr. Hwa-Youp Cha.

RULING

Are these marks well-known?

Section 39a of the Ordinance states that requests to cancel a mark should be submitted within five years from registration:

 39.—(a) An application under section 38 for the removal of a trade mark from the Register on the ground that it is not eligible for registration under sections 7 to 11 of the Ordinance, or on the ground that the mark creates an unfair competition in respect of the applicant’s rights in Israel, must be made within five years of the issue of the certificate of registration under section 28.

Since the request for cancellation was timely filed, it is necessary to consider it, and so it is necessary to consider if the mark was indeed not fitting to be registered. Trademarks are property rights and cannot be cancelled in a cavalier manner. See for example, Amir Friedman “Trademarks – Legislation, Rulings and Comparative Law (2005) pages 667-670 and BAGATZ 144/85 Klil Non-Ferrous Metal Ltd. Vs Commissioner of Patents, Designs and Trademarks p.d. 42(1) 309-318 (1998):

The burden of proof to show that a mark is registerable is on the Applicant, but in a cancellation proceedings, the burden of proof that a mark is not registerable is on the challenger. The registration of a mark is a prima facie indication that it is registerable and so the burden of proof is on the Challenger to rebut this indication. In all cases where the burden of proof is on one party or another, it switches back and forth in light of the evidence submitted…so a doubt with regarding to validity or otherwise acts in favour of the mark owner.

A mark that is “well-known” under the Law is a mark that is well-known in Israel in relevant circles, and fame abroad is insufficient. See Appeal 9191/03 V&S Vin Spirt Aktiebolag vs. Absolut Shoes Ltd., 19 July 2004. When deciding whether or not a mark is well-known, the following are considered: how well-known the mark is to the relevant population, the scope and longevity of the usage, the investment in promoting the mark over time, the degree that the mark is different from other marks, the degree to which the owners had sole usage of the mark, the investment by owners in registering and enforcing the mark, etc. – Amir Friedman “Trademarks – Legislation, Rulings and Comparative Law (2005) , see also the Opposition to Israel trademark no. 93261 “Pentax” – Pentax SRL vs. Asahi Kogaku Kogyo Kabushiki Kaisha, 3 September 2003.

rubber duckBefore determining the reputation of a mark with the relevant population in Israel, it is necessary to identify the population. From the evidence submitted, the population is not the end-user purchasing off the shelf, but rather industrial entities. This can be learned, inter alia, from Section 9 of the Applicant’s affidavit and from pages 16-26 of the appendix thereof, which details the usage of their rubber, and appendix 3 of the Applicant’s affidavit and their catalogue of products. All these teach that neither the Applicant for cancellation nor the responder are targeting their goods to the end-user, but rather to companies making rubber goods that purchase the raw material from them. It would appear that the end user that purchases rubber gloves, dummies (pacifiers), rubber bands and the like, are interested in the manufacturer of the product and not in the supplier of the raw material.

From the evidence submitted, the Adjudicator is not convinced that either mark is “well-known” in the sense of the Law. In this regard, it will be noted that the parties themselves decided not to hold an oral hearing with cross-examination. However, each party attacked the other’s marks, so the court can only look at the evidence submitted and decide whether a case has been made to support the allegations and to attach evidentiary weight to the evidence.

Mr. Rivero, Dynasol’s legal counsel , testified that the company had spent a fortune in branding and promoting their mark around the world, but no numbers or supporting evidence were given to substantiate this claim. A similar conclusion was reached regarding the claim that the trademarked products had enjoyed tremendous success with the consumers, and that the mark was in use in Israel since 2003 and the products were successful. So the challenger has not reached the burden of evidence for its marks to be considered well-known to the Israeli public.

Similarly, Mr. Hwa-Youp Cha’s affidavit is insufficient to persuade that by SK Global Chemical Co. ltd’s mark is respected and well-known by the Israeli consumer. His affidavit was also unsupported by evidence and the adjudicator was not provided with any evidence of investment in promoting and marketing goods under the mark, or of the amount of sales in Israel.

In light of these conclusions, relating to cancellation under sections 11(13 and 11(14) based on the mark being well-known, is moot. Similarly, the challenger’s claim that leaving the registration in place will create unfair competition with their well known mark, contrary to section 11(6) of the Ordinance is also moot.

Is there a likelihood of confusion? The triple test

Section 11(9) states that an applied for mark must not be deceptive, as follows:

  1. The following marks are not capable of registration:

(9)   a mark identical with one belonging to a different proprietor which is already on the register in respect of the same goods or description of goods, or so nearly resembling such a mark as to be calculated to deceive;

Whether or not there is deception is determined using the so-called triple test that is found in the case-law, and is based in the sight and sound of the mark, the type of goods, the clients and marketing channels and other considerations, to which the common sense test has been added. See 261/64 Pro-Pro Biscuits (Kfar Saba) Ltd. vs. Fromein and Sons ltd. p.d. 18(3) 275 (1964), 5454/02 Taam Teva (1988) Tivoli vs. Ambosia Surprise p.d. 57(2) 438, 451-453 (2003) and Appeal 5792/99 Communication and religious Jewish Education Family (1997) Ltd. vs. SBS Publicity, Marketing and sales Promotion Ltd, p.d. 55(3) 933 (2001).

The adjudicator was prepared to accept that there was some similarity between the marks, but did not consider this similarity as deceptive. Comparison between marks has to be done between marks in their entirety. When considering allegations of deceptiveness, one should note that the consumer’s memory is imperfect. See A. H. Seligsohn Trademarks and Related Legislation (1973) p. 81 and 6658/09 Multilock vs. Rav Bareach Industries Ltd. 12 January 2010.

The Sight and Sound strand is the dominant element of the test (see Taam Teva ruling). When the marks are compared visually, it is clear that there are differences between them. In the challenged mark, the S is stylized. The first syllable is different. The challenger’s mark starts with the syllable SOL, whereas the challenged mark starts SU which is pronounced differently. The Adjudicator considers that this results in a different visual appearance as well.

The Adjudicator accepts the mark holder’s assertion that PRENE and ERENE are common suffixes in class 17 and these suffixes are established in science, particularly in chemistry, polymer sciences and rubbers. In their summation, the respondent gave many examples of trademarks that included such suffixes, particularly for rubbers, thermoplastics, plastic, polymer mixtures and the like, many of which ended with PRENE or ERENE and were registerable. The Adjudicator also accepted that the trademark register was in the public domain and reference to it did not require an affidavit (see Appeal 941/05 The Cooperative Association of Vinters of Rishon L’Zion and Zichron Yaakov Wineries Ltd. 17 October 2006). Consequently, the suffixes of challenger and respondent should be given little importance.

Although foreign case-law does not bind the Court of the Israel Patent and Trademark Office, the Adjudicator considers it worthwhile to refer to the Spanish Patent Office ruling concerning the stylized SUPRENE mark in a parallel case between the parties, regarding which it will be noted that Challenger did not appeal that ruling:

“There is sufficient word dissimilarity between them, since the only coincident term in the wording is common in almost all trademarks that cover this kind of products, in consequence it is considered that there is no reasonable risk of association between the trademark applied for and the one previously registered.”   

The Peruvian Patent Office came to a similar conclusion as well.

As to the type of goods, the parties agree that there is a large overlap in that both make rubber products of various types, however in both cases, it is the manufacturers and not the end users that are the customers and thus target group.

tiggerSince the customers are industrial companies, before purchasing large quantities of stock one can assume that they would consider the technical specification, resistance to degradation and other properties including price. These industrial customers have technical knowledge and do not purchase rubber materials without consideration, and one assumes that they would look at the stamped on supplier’s brand names and differentiate between the two competing parties. The Applicant for cancellation noted that products are typically purchased by the tonne and customers visit the factory before making a purchase, and it is only after negotiation that the seller and buyer sign a contract that specifies the supplier and the goods purchased.  In view of the nature of the customers, the likelihood of misleading is negligible.

Other Considerations

From the evidence before her, which was not subjected to cross-examination at the request of the parties, it appears that the parties are both manufacturers of raw rubber materials. The Adjudicator was not impressed that one party has a reputation that the other was attempting to ride on.

The Challenger did not bother to submit evidence of actual misleading. No affidavits of clients that were confused were submitted. The onus is on the challenger to show that misleading occurs, and with activities in 70 countries, if there was confusion, it shouldn’t have been difficult to show it. This does not mean that actual confusion is required to cancel a mark, but were such evidence to be available, one assumes that the challenger would present it.

There seems to be no basis to conclude that there is a likelihood of confusion amongst the Israeli customers. The Adjudicator considers it impossible that one or other manufacturer would inadvertently purchase the products of the wrong supplier.

Similarly the challenger’s claim that the registered mark lacks acquired distinctiveness is rejected, as is the claim that the mark was registered in bad faith to trade on the challenger’s reputation. Where there are specific clauses 11(6) to 11(9) one cannot use 11(5) (public order) as a catch-all to prevent confusion.

In conclusion, the cancellation proceeding against Israel Trademark 2458038 is rejected. The challenger Dynasol Elastomeros is ordered to pay 9000 Shekels costs.

Ruling by Ms Yaara Shoshani Caspi regarding Dynasol Elastomeros attempt to cancel Israel Trademark 2458038 to SK Global Chemical Co., 28 May 2017

 


Dilution of a Beverage Mark?

June 14, 2017

267280CT Miami LLC applied to register Israel Trademark Application No. 267280 in classes 9 and 38. The mark in question  is shown alongside.

On 1o May 2016, the mark was allowed and it published for opposition purposes on 31 May 2016. Perhaps not surprisingly,  Blu Israel Drinks ltd opposed the mark under Section 24a of the Trademark Ordinance 1972 and Section 35 of the Trademark Regulations 1940.

blu(Blu Israel drinks makes an energy boosting caffeine supplement drink).

On 9 October 2016, the Applicants requested an extension of time until 9 December 2016, for submitting their Counter-Statement of Claims, but did not actually submit a Counter Statement of Claims by then, or indeed prior to this decision issuing.

In these circumstances, the Applicant may be considered as having abandoned their mark and thus  Adjudicator Ms Shoshani Caspi ruled that the file be closed. Furthermore, applying her discretionary authority under section 69, she ruled reasonable damages for having to manage the Opposition. After weighing up the different considerations, she ruled  that the Applicants should pay 3500 Shekels exc. VAT within 14 days.


Israel Supreme Court Rejects Appeal from Shukha Trademark Infringers

June 9, 2017

shukhaThere are two branches of the Shukha family that market oil and other food stuffs: Sons of George Shukha ltd. and Antoine Shukha and Sons ltd.

Sons of George Shukha ltd, which also imports and distributes rice, have 27 registered trademarks including the name Shukra in English, Hebrew and Arabic.  The earliest registered mark is from 1984 but one mark is for Sons of George Shukra from 1930.

Over a six-year period, the Sons of George Shukha ltd attempted to enforce their marks through the courts with the parties reaching an agreement that allowed Antoine Shukra and Sons to use labels that include the name Shukra in a font size no larger than that for Antoine and Sons and together with a logo. The settlement, though ratified by the court, was not fulfilled and so Sons of George Shukha ltd. appealed to the Supreme Court. Antoine Shukra and Sons submitted various creative arguments arguing that since the size of their oil containers was larger, the agreed size of the label was no longer reasonable. They also claimed that the ruling only related to the name Shukra in Arabic. They submitted that two weeks to recall and remove all infringing products from the shelves was too short a period, and the penalty of 2500 Shekels for every day delay would cripple them.

Supreme Court Judge Amit pointed out that unless the penalty for failing to enforce was crippling, infringing parties would simply continue to prevaricate. He noted that in two of the three counts of continued infringement, Antoine Shukra and Sons acknowledged that they were infringing, and in the third case, where the issues that received court endorsement related to the size used for the name Shukra and to it being used together with a logo, even if there was some grounds to consider the Appeal based on font size, the infringers were not displaying the logo prominently. He refused to reconsider issues ruled on by District Judge but noted that the District Court judge had stated that the Appellants had made various claims in affidavits but withdrew them during the hearing, and had generally acted in bad faith.

Judge Amit noted that with financial penalties for failing to enforce, staying a ruling during Appeal was generally not appropriate since a monetary ruling could rectify any issues. Judge Amit refused to stay the enforcement, but granted a 30 days instead of 14 days for it to be enforced.  By the end of this period, the Appellants have to provide a full record od what was done to recall or relabel the infringing goods. Costs of 5000 Shekels were awarded to Sons of George Shukha ltd.

Appeal 4113/17 Sone of George Shukra ltd. vs. Antoine Shukra and Sons ltd. and various members of the Shukra clan and related companies. 8 June 2017


Costs Award for Drink Point Competing Marks Proceeding

June 9, 2017

Where two parties file confusingly similar or identical trademark applications in Israel, such that both are co-pending, a competing marks proceeding ensues under Section 29 of the Trademark Ordinance 1972. More important that who filed first, are the issues of inequitable behavior and the scope of use.

On 20 May 2012 Assaf Nakdai and Benny Molayof submitted Israel trademark application no. 246704 for DRINK POINT covering business management and business administration; office functions; advertisements; sales promotion; sale of alcoholic beverages; included in class 35.

On the same day Drink Point LTD submitted the identical mark for services for providing food and drink; all included in class 43

250525Then on 9 October 2017, Drink Point LTD submitted an application for the same mark for business management, advertisements and sales promotion (including sale of alcohol); all included in class 35 and on 23 October 2017 Drink Point LTD submitted an application for the stylized mark shown alongside.

On 8 March 2017 Assaf Nakdai and Benny Molayof withdrew their application following a ruling by Judge Cochava Levy of the Tel Aviv – Jaffa Magistrate’s Court. Consequently on 12 March 2017, the Deputy Commissioner terminated the competing marks proceeding and allowed Drink Point’s applications to proceed to examination.

Drink Point LTD requested 14,200 Shekels in costs, alleging inequitable behavior and costs incurred in the corresponding court proceeding.

Ruling

In the ruling, the Deputy Commissioner reiterated the principle that the winning party were entitled to recoup their actual costs. However, she could only consider costs incurred in the competing marks proceeding, not those relating to the court ruling which should be addressed to that court. Furthermore, she was not convinced that Nakdai and Molayof had acted inequitably. The invoices submitted for Drink Point ltd’s lawyer’s fees were not sufficiently detailed to be considered. Therefore, she estimated an appropriate fee for the amount of work performed and ruled 7000 Shekels costs.


3D Vision – virtual-reality reality

June 8, 2017

3dvision3DVision LTD submitted Israel trademark application no. 273325 for “3DVISION” on 25 March 2015. The mark covers Services of design, construction, building and designing websites; design and development services, namely, development services of technological solutions, software development services, web hosting services and content management services, visual communication design, graphic design services; graphic and architectural simulations design services using computer software; computer services, namely, design services and development services of three-dimensional movies, pictures, motion pictures with sound, audio and visual aids; Creative services, namely, design and development of computer software and consulting services related thereto; design of animated websites; design services of websites for marketing and advertising purposes; design services of graphic illustration services for others; design services of customized multimedia products for educational, marketing, training, demonstrational, presentation, architectural, engineering and development purposes; design services of multimedia products in the form of applications of computer graphics and website hosting services for the exchange of graphics, images, text, computer simulations, architectural simulations, marketing and promotional videos between the parties, all in class 42 .

The trademark department considered the mark as indicating three-dimensional perception and lacking distinctiveness for the relevant goods and services. Since other service providers used the term as well, they refused it under Section 8(a) of the Israel Trademark Ordinance 1972, and also considered it as contravening section 11(10) as being descriptive. Although the mark was filed in a specific font, the Examiner considered the san serif font as not having the minimal styling to render the mark registerable.

Furthermore, the mark was considered confusingly similar to Israel trademark number 191734 for D-Vision in class 34, but that mark lapsed on 30 January 2017 due to non-payment of the renewal fee.

On 28 December 2015 the Applicant argued that the mark had acquired distinctiveness through usage and was associated exclusively with the Applicant and thus was registerable under Section 8b of the Ordinance. The Applicant argued that the mark has been in use for 13 years and the public was exposed to it in various media including via the Internet. The Applicant also noted that since 2003 they had been using the identical Internet domain (not stylized) and had similar pages and channels in various social media including Facebook and YouTube for over five years. This exposure, continued usage and marketing investment had resulted in the mark being well-known for virtual reality and animation in the real estate business [MF – Virtual Reality Reality?]. An affidavit by the CEO was submitted to support these claims. Read the rest of this entry »