Can a 3D perfume Bottle be Registered as a Trademark?

April 24, 2017

christiandorChristian Dior submitted Israel Trademark Application Number 264427 for a 3-dimensional perfume bottle as shown.

The Application was submitted on 16 April 2014 for perfumes, perfumery products, eau de parfum, eau de toilette, eau de cologne, extracts of perfumes; perfumed body milk, body oils and body lotions, perfumed body lotion and shower gel, perfumed bath lotions and gels, soaps, perfumed shampoo; make-up products for the face, the eyes, the lips, cosmetics products for the nails and nails care; all included in class 3.

In the first Office Action of 9 August 2015, the Examiner considered the mark as non-registerable under Section 8(a) of the 1972 Trademark Ordinance in light of Circular MN 61 which was then in force, since the mark relates to the three-dimensional package or container for the goods in question.

In that letter, it was stated that the Commissioner could consider allowing a three-dimensional mark in exceptional circumstances where the following three conditions are all fulfilled:

  1. The mark serves as a trademark in practice
  2. The mark does not have any real aesthetic or functional purpose
  3. The mark has acquired distinctiveness through use

In a response from 8 December 2015, the Applicant explained that Christian Dior was a fashion house founded in 1946 for quality goods such as haute couture, perfumes, jewelry and fashion accessories. An affidavit from Riccardo Frediani the General IP Counsel for perfumes was included as part of the response.

The Applicant listed various points that were endorsed by the Affidavit, which were claimed to provide the required distinctiveness:

  1. The perfume associated with the requested mark was a flagship product
  2. The perfume was sold under the mark continuously since 1999 and was sold in 130 countries
  3. The perfume was sold in Israel since 2000 and much effort had been expended in branding and marketing in Israel.

The Applicant explained that the bottle was inspired by the jewelry worn by Masai women, and by 19th century wedding dresses. The bottle design had not changed since it was first introduced.

In addition, the Applicant claims that the fragrance associated with the mark was Dior’s most popular fragrance in Israel and was the fifth most popular fragrance in Israel. These claims were supported by various write-ups and market analysis. Together with the response submitted in December 2015, the Applicant requested that part of the evidence submitted remain confidential as it relates to specific sales and financial data. This confidentiality was granted in a December 2015 interim ruling.

The response of 30 December 2015 was considered sufficient to establish acquired distinctiveness as required by Section 8(b), but the Examiner held that since the applied for mark have previously been registered as a design, it could not be registered as a trademark. The design in question is 3293, registered by Christian Dior in class 9(01) under the titled Perfume bottle on 30 April 2000, which termination on 26 March 2014.

The Examiner considered that the fact that the mark had been registered as a design implied that it was an aesthetic creation and as such could not be registered as a three-dimensional mark in view of paragraph 5.2 of Circular 032/2015 “Trademarks – Requests for Registering Three Dimensional Marks” which regulates the registration of three-dimensional toffiffeemarks that are the objects themselves or their packaging. The Circular states that where the evidence indicates that a product or packaging design serves as a trademark and is neither very aesthetic or very functional; and, through usage has acquired distinctiveness it may be registered (these requirements are inherited from the earlier Circular MN 61), but updated in light of the Supreme Court’s Toffiffee ruling 11487/03 August Storck.

The Applicant requested to appeal the Examiner’s decision and a hearing was held on 28 June 2016.

The Registerability of the Desired Mark

The Commissioner Asa Kling considered that the weight of evidence submitted does indeed show that the bottle mark has acquired distinctiveness. This is evidenced by the sales data, the amount of advertising and exposure of the mark in Israel and abroad, and Frediani’s affidavit is persuasive. The question that remains is whether the mark has a real aesthetic or functional purpose that prevents it from being registered, and if this is not the case, then it is necessary to consider if the shape serves as a trademark in practice.

Circular 032/2015 states that three-dimensional representations of goods or their packaging are not registerable as trademarks if they are inherently distinctive. In such cases they are properly protected as registered designs. It then goes on to give the three conditions detailed above.

In this regard, it is noted that Circular 032/2015 that the Examiner relied upon and which has subsequently been cancelled, was subsequently merged into 033/2015 “Emphases for Examining Trademark Registrations”, which entered into force on 15 December 2016, and since Section 5.2 is included in the new regulation, the cancellation of 032/2015 does not render this discussion moot.

The registerability of three-dimensional marks has been much discussed in the case-law. The basic ruling is the 2008 decision 11487/03 August Storck vbs. Alpha Intuit Food Products ltd. published on 23 March 2008 (the Toffiffee case).

Following this ruling, the Patent Office updated its policy regarding the registerability of three-dimensional marks, resulting in the various Circulars and in a number of rulings.

croccrocFor example, the 212302 and 212303 Crocs Inc decision of January 2013, the 228232 and 228233 Seven Towns SA decision cube-in-handof November 2012, the 184325 Coca Cola ruling of September 2012 and the 238633 Absolut decision of September 2013.

The problem with deciding whether three-dimensional trademarks are registerable is particularly apparent when considering liqueur or perfume bottles. liqueurs, spirits and perfume do not have a shape and the shape in question is that of the container.

The Applicant claims that the act of registration of the bottle as a design does not prevent it being or becoming a trademark. The Applicant relates to the Toffiffee ruling and understands the Supreme Court as stating that when a product is launched, the three-dimensional shape of the product or package cannot serve as an indication of the manufacturer. At the registration stage, the only protection available is that of a design registration. However, the design may subsequently acquire distinctiveness through use that is identified with the supplier and can therefore subsequently be registered as a trademark.

The Applicant considers that the Supreme Court differentiated between products and packages and that it is not necessarily true that one can draw comparisons between the two categories.

The Applicant claims that there is no bar to the same product being protected both as a design and as a trademark. In the present instance, there is an overlap between the two types of protection. The ‘real aestheticness’ that the Commissioner’s circular considers as preventing registration is different from the aesthetic requirement that is necessary for design registration under the patent and design ordinance; otherwise something registered as a design could never be a trademark.

However, Section 5.2 of the Circular does, nevertheless, refer to something ‘serving a real aesthetic or functional purpose’.  The applicant considers that the effort expended in promoting the product that is identified with the bottle has borne fruit, and despite there being no word mark attached to the bottle, the mark is well-known.

Frediani notes that section 1 of the Trademark Ordinance clearly states that three-dimensional marks may be registered:

“Mark” means letters, numerals, words, devices or other signs, or combinations thereof, whether two-dimensional or three-dimensional

And defines a trademark as follows:

“Trade-mark” means a marked used, or intended to be used, by a person in relation to goods he manufactures or deals in;

When considering the registerability of a mark, one should bear in mind the purpose of registration which is to be a means of protecting the manufacturer and seller and of preventing unfair competition, and also to protect the public. See 3559/02 Toto vs. Sports Gambling Authority p.d.. 49 (1) 873, and 3776/06 Ein Gedi Cosmetics vs. Commissioner of Patents May 2008, and also Seligsohn.

Section 2 of the Patents and Design Ordinance states:

“design” means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to, and are judged solely by, the eye, but does not include any mode or principle of construction or anything which is in substance a mere mechanical device.

The registration of a design requires that it is new or original, and not previously published. The purpose of the design is to give an identity or form to a product, it is that which gives it its uniqueness. As the Supreme Court ruled in 7125/98 Mipromal Industries Jerusalem vs. Klil Industries p.d. 57(3) 702:

The protection given to the unique shape of an article is that which the eye is able to comprehend… the form needs to attract the eye of the relevant consumer in a manner that influences the specific choice.

If so, when exposed to a trademark, the consumer’s right is to know the source of goods, whilst respecting the mark owner’s rights to prevent unfair competition. A design right is based on the lines of form of a good and a design that draws the eye of the consumer.

In Toffiffee the Supreme Court stated that the three-dimensional shape of a product may be registered if the owners can prove that it has acquired distinctiveness through use. However, this is with the proviso that it does not have real aesthetic or functional value:

In contrast, the considerations for registering a three-dimensional mark based on the shape of a product is on the basis of acquired distinctiveness. When referring to a good as having a shape that has acquired distinctiveness, we means a shape that causes the consumer to identify the product with a specific source. If it is proven that a good has acquired distinctiveness, it is not important that rarely will the shape be inherently distinct…this means that in those cases where it is proven beyond doubt that the shape serves to distinguish the product – the shape may be registered.

In the Toffiffee case, the court related to the differences between trademarks and other types of intellectual property, including designs, which can coexist in the same product:

It is stressed that where the shape of a good serves as an identifier and differentiator, it serves the function of a trademark. It therefore deserves the protection accorded by trademark laws. It is possible that the same shape is protectable by other types of intellectual property such as designs, or has indeed been protected in this manner. However, since the purpose of trademarks is different from that of other types of intellectual property, the fact that this the shape has already been protected does not prevent it from being protected as a trademark. Furthermore, we are aware that generally the functionality of a mark prevents its registration as a trademark even on the basis of inherent distinctiveness but rather under acquired distinctiveness. We have raised the question of whether this difference between passing off and trademark laws is desirable. That’s as may be, as far as three-dimensional marks consisting of the shape of a product are concerned, there is no choice but to conclude that where the mark is functional (or aesthetic), it prevents it being registered, even if it may be proven that it has acquired distinctiveness. Unless we say this, one may provide an everlasting monopoly for a functional (or aesthetic) shape. This could be very damaging for the market in question. 

From here it is clear that a three-dimensional registered trademark can coexist with a design registration for the shape of a product, so long as this does not provide a monopoly to an aesthetic shape that would create an obstruction to marketing in the relevant market. (this accords well with the background in the Toffiffee case.

Based on this, and in light of the guidelines adopted by the Patent and Trademark Office, the shape of a product having a functional or aesthetic nature may not be registered as a trademark where its form serves a major functional or aesthetic purpose, and under these considerations the mark was refused.

The rationale behind this is to prevent the widening of trademark protection beyond its classical purpose and preventing competition. Since a consumer choses a product for its shape, and this is protected with a trademark, he is doing so out of aesthetic considerations based on what attracts the eye and not as an indication of origin. This is clarified by the Absolut vodka case where the design is neither particularly functional nor aesthetic, but is inherently distinctive and is identified with a particularly spirit, and this is the case with spirits and perfumes in general. It appears therefore, that bottles and jars may acquire distinctiveness and be considered as trademarks by the public, however only after years of use.

Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 199 explains that marks of this nature acquire distinctiveness after years of use.

The European Court of Appeal came to this conclusion in Case T 178/11 Voss of Norway ASA v. OHIM,(28.5.2013) “Absolut”:

“…Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any verbal or graphic element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a verbal or figurative mark (see Freixenet v OHIM, paragraph 38 above, paragraph 46 and the case-law cited).”

More specifically, as a liquid product must be in a container in a bottle in order to be marketed, the average consumer will perceive the bottle above all simply as a form of container. A three-dimensional trade mark consisting of such a bottle is not distinctive unless it permits the average consumer of a product of that kind, who is reasonably well-informed and reasonably observant and circumspect, to distinguish the product in question from that of other undertakings without any detailed examination or comparison and without being required to pay particular attention (Case C‑218/01 Henkel [2004] ECR I‑1725, paragraph 53, and Case T‑399/02 Eurocermex v OHIM (Shape of a beer bottle) [2004] ECR II‑1391, paragraph 24, upheld on appeal in Case C‑286/04 P Eurocermex v OHIM [2005] ECR I‑5797).”

Since we are not considering something that it aesthetic per se, but rather what is primarily a shape that serves the commercial purpose of linking a good with its supplier, the aesthetic aspect is secondary and less significant.

From here, if the Applicant manages to provide that the commercial considerations for choosing the product are dominant and that the shape of the product or the packaging actually serve as a trademark far beyond the aesthetic aspects, it may be registered.

As a general rule, as stated in the Toffiffee ruling, in some cases a product may benefit as both a trademark and as a design. As explained by Derclaye and Leistner- Intellectual Property Overlaps- A European Perspective (2011), p. 61:

Since a design is the appearance of a product and can be in two or three dimensions, there can be overlap with two and three dimensions trademarks; for instance, packaging, get-up and graphic symbol, which the Design Directive cites as examples of possible products in which design right can subsist, as well as logos, can also be signs that can be registered as trademarks.

Thus, design right can be acquired first, and then trademark applied for later when the public has been educated to recognize the packaging as a trademark, ie consumers only see it as indicating the origin of the goods as coming from a single company”.

This case relates to a trademark application for a perfume bottle that has a wide base, a narrow neck and a round stopper. The neck is coiled, and, as the Applicant noted, it was inspired by the Masai women’s jewelry.  There is no name or other element that says Christian Dior. The bottle has aesthetic elements that have some weight but the shape has acquired distinctiveness which should be given more weight.

The J’Adore perfume bottle has been widely advertised in various media in Israel and abroad and has been in constant use since 1999. The consumer does not purchase the perfume because of liking the shape of the bottle so much as because he identifies the bottle with the contents which is the product.

As a distinctive shape, the bottle was registered as a design, but over time, it has acquired distinctiveness as a container for the specific fragrance and thus serves as a trademark. The commissioner does not think that allowing the mark to be registered prevents competition in the field.

The application is returned to the Examiner for registration, with the proviso that it is clearly labeled as being a three-dimensional mark.

Ruling re Israel Trademark Number 274427, J’Adore 3D Perfume Bottle, Asa Kling 26 February 2017. 

COMMENT

I have a friend and neighbor who is genealogically half Masai and half Jewish. To me, David is tall and black. However, I am told that in Kenya where he was born, he was considered short and Jewish looking. He explained to me that the coiled gold extended necks of Masai women was a method of controlling them. If they misbehaved, their husbands could remove the jewelry and their neck bones would be unable to support their heads. The husbands could then take new and more obedient wives. I find this jewelry sinister and would not personally want to use it as inspiration for a perfume bottle. That said, I don’t see a problem in providing long-term protection for distinctive bottle shapes as trademarks, so long as functional shapes are not monopolized in this manner. The ruling is a correct one.

I don’t think that a judge would accept arguments that the Dior registration should prevent Tia Maria being sold in a long stripy necked bottle. This case is not analogous to Disney taking characters that are copyright protected and converting into trademarks to keep them from entering the public domain. It does raise interesting questions regarding the iconic Croc beach sandal that was registered as a trademark. Croc should be able to continue using their clog design as a trademark for branding purposes, but should  not be able to act against other manufacturers of substantially identical beach clogs. I think that the less said about the Seven Towns cube decision, the better.


Panama Jack

April 23, 2017

Panama JackPanama Jack Inc. submitted a cancellation request against registered Israel TM No. 79826 for a Panama Jack pendant which was registered back in 1994 in group 25 by Grupp Internacional SA.

Section 41(a) of the 1972 Tradeamrk Ordinance states that:

Any interested party may request cancellation of a trademark on the grounds that there was never a good faith intention of using the mark and that the mark was not used in good faith within the three year period prior to the cancellation request being submitted.

Registered trademarks are considered property rights in all respects and should not be undermined without due consideration. The requester for cancellation was to show that the mark was not in use. See 476/82 Orloged.vs. Commissioner of Patents p.d. 39 (2) 148. The burden of evidence then bounces back and forth between the parties, and if the challenger provides prima facie evidence that shows that a mark should not be cancelled, the burden of proof then falls on the mark owner to dispute the evidence brought by the challenger and to supply evidence that there was, in fact, use of the mark. Where there remains a doubt, this works for the benefit of the mark owner, and the mark will not be cancelled. BAGATZ 296/89 Philip Morris vs. Moorgate Tobacco Co Ltd. p.d. 41 (1) 485.

Regulation 70 of the 1940 Trademark Regulations state that:

A request to correct a registration or to cancel a registered mark from the register will detail the facts and the requested correction and will be submitted in two copies; one to the Registrar and the other to the owner of the mark.

In this instance no one denies that the mark owner received a copy of the cancellation request.

Section 71 of the regulations state the case should continue as follows:

With submission of a cancellation request with copy to the registered owner, the matter proceeds in accordance with regulations 37 to 46 (opposition regulations) with the appropriate changes.

The mark owner has two months, i.e. until 30 January 2017 to respond. In this instance, he failed to do so and also failed to request an extension of time. In so doing, Section 71(a)a applies:

If the owner of a mark does not submit a response under Sefction 70 within two months, the Commissioner will give the supplicant two months to state their case.

In this instance, as the mark owner has failed to respond, the Supplicant for cancellation has two months to submit their evidence.

Re 79826 Grupp Internacional vs. Panama Jack, Intermediate Ruling Shoshana Yaara Caspi, 13 March 2017


Trademark Cancellations – Jumping on the band wagon

April 23, 2017

the herbsMichael Noy-Meir owns Israel TM No. 106994 for “Supherbs”. He is represented by Chani Rosenberg and Associates.

Ambrosia Supherb LTD filed a cancellation request and Peretz Gan, represented by Chani Roenberg and Associates wishes to join the case as a third-party. Peretz Gan claims to be a partner with Noy-Meir the mark owner for 20 years and that both of them used the mark over a twelve-year period.

The Cancellation request was submitted on 3 November 2016 and on 27 November 2016, Peretz Gan requested that the mark be assigned to him, based on an agreement from 19 September 2016.

On 4 January 2017, Deputy Commissioner Jacqueline Bracha ruled that if the mark survives the cancellation process, it may be assigned, but cannot be assigned whilst under attack.

Ambrosia Supherb LTD object to Peretz Gan being added as a third-party. They claim that there is insufficient evidence that he was rights in the mark as required by Regulation 72 of the 1940 trademark regulations. The Supplicant for Cancellation has also requested that following submission of an Affidavit, a date for a hearing be set.

Regulation 72 states:

Any person other than the registered proprietor who claims to have a benefit in a registered trade mark in respect of which an application has been filed under regulation 70 may apply to the Registrar for permission to allow him to join the proceeding and the Registrar may refuse or grant such permission after hearing the parties concerned and to set the conditions that he shall deem necessary. Before the application is heard in any manner whatsoever, the Registrar may demand that the applicant make an undertaking to pay the same expenses that the Registrar shall award to one of the parties in the circumstances.

The Deputy Commissioner does not see justification to reject the request. Section 72 sets a low bar for adding third parties to cancellation or opposition proceedings. It is adequate for a third-party to declare some interest to be cojoined to the proceeding. The Deputy Commissioner does not consider that the third party has to prove standing and refers to the Patent Office Ruling concerning 216,916 Danny Argon vs. Strauss Culture Factories LTD (11 November 2012):

Where the Third party claims apparent rights to a mark and excluding him from the proceeding would have negative consequences, it seems appropriate to include him in the proceedings as it seems improper to prevent him for stating his case.

A hearing is set for 20 April 2017 at 2 PM and the third-party may submit his supporting affidavit by 6 April 2017.


Freshly Squeezed

April 19, 2017

שחוטThis ruling concerns a cancellation request by the originator of a mark against a registered owner who bought the mark with other assets from a company that the originator had sold his business to that had subsequently gone bankrupt.

The grounds for cancellation request were alleged lack of use.

Israel Trademark No. 220623 is for a stylized logo including the phrase “סחוט טרי” transliterated as ‘Schut Tari’ which means freshly squeezed. The mark is owned by Schut Tari 2007 ltd and was registered for nonalcoholic drinks in Class 32.

 

Background

The manager of the Applicant for Cancellation, Mr Ohad Harsonsky set up a factory in the 1990s for producing fruit juices that were marketed under the Schut Tari brand.

orange jewsApproximately in the year 2000, Harsonsky set up the Shut Tari company that continued the activities of the factory. At the beginning of 2005, Harsonsky decided to sell the company and the factory to Pri-fer Natural Marketing and Distribution (2005) ltd. [MF – Pri is Hebrew for fruit. The name is a pun on prefer] which was established by MR Erez Rifkin to make the purchase. Mr Rifkin established Prifer Natural ltd, a company active in the fruit juice industry, in the early 21st Century.

phones-blackberry-orange-phone-fruit-demotivational-posters-1295112418Blackberry on Orange sketch.

After the purchase was concluded, Pri-fer changed their name to ‘Schut Tari Mitz’ Tivi ltd. (Natural Freshly Squeezed Juice ltd), and Schut Tari changed their name to Multi-Pri ltd. The Pri-fer Group started producing freshly squeezed juices and Multi-pri stopped all activities. The Pri-fer Group did not succeed in absorbing all of Schut Tari’s activities, and Pri-fer was late paying the sale price. A business disagreement developed and the Pri-fer Group and Multi-pri agreed to mediation in March 2006. A mediated agreement was given the status of a court ruling by the Ramallah Magistrate’s Court. The mediator was Haim Sodkovitz who represents Eco Alpha, the Applicant for Cancellation.

orange juice squeezerPri-fer and Mr Rifkin were unable to meet the negotiated payment terms that were agreed to in the mediation. Consequently, on 7 March 2007, Harsonsky and Multi-Pri used legal collection means. However, since Rifkin started bankruptcy proceedings and the Pri-fer Group is being disbanded, the bailiffs were unable to collect the debt. Read the rest of this entry »


The Kosher IP Dinner (KIPA) at INTA

March 30, 2017

kosher restaurantsAt the INTA Conference every year, the Kashrut observing practitioners try to get together for dinner one evening in a local Kosher restaurant. It is really a way to compare pita and humus followed by entrecote & chips at Chabad houses and Kosher restaurants around the world.

This year, INTA is in Barcelona, from 20th to 24th May.

kosher dining clubSo far, via the KIPA google group, we have 10 people who have expressed an interest in attending dinner, of which 4 can meet for supper on Sunday, 8 are available on Monday and 2 can meet on Tuesday. (I am not voting).

We usually get about 25-30 participants. Next year the conference is over Shavuot, so it this will be the last INTA KIPA dinner until 2019!

Although for obvious reasons, this event seems to attract Jewish practitioners, particularly those more committed to the dietary laws, the event is open to everyone. Occasionally someone sponsors, but generally we go Dutch. It makes a change from nibbling on raw vegetables and eating peanuts at the larger receptions.

days-of-week-song-gestures Anyway, assuming that most IP professionals that would be interested in this dinner follow this blog, I invite you to email me to register. I will put you in touch with the group, and by the middle of next week, we will select the day.

However, unless there is a surge of interest for Sunday or Tuesday, it does rather look as though we’ll be meeting Monday evening.


More Coffee!

March 23, 2017

EdenFollowing on the heels of the Izhimis family feud, we now report on a competing marks proceeding between Abu Shukra Import Export and Marketing Ltd and Strauss Coffee B.V.

Again, this relates to Turkish coffee. On 2 May 2013, Abu Shukra filed Israel TM application number 255526 in class 30 shown alongside.

This ruling relates to all over packaging designs being used as trademarks and to branding concepts. To my mind, it also raises issues of monopolies and market abuse, but this is beyond the competence of the adjudicator and commissioner to relate to, although I think judges might see things differently.

22263EliteOn 16 July 2014, but before Abu Shukra’s mark was examined, Strauss filed Israel TM Application No. 266680 for Coffee, roasted coffee, roasted and ground coffee and coffee substitutes, all in class 30, and also Israel TM Application No. 266683 for Turkish coffee, roasted Turkish coffee, roasted and ground Turkish coffee and Turkish coffee substitutes, all in class 30. Strauss Coffee’s marks are shown alongside.

[At this stage we note that Strauss Coffee owns the Elite brand among many others. Strauss employees 14,000 people in 20 countries. The empire was built on their Turkish coffee brand, but they also now own Sabra, the leading hummus brand in the US, are partners with Yotvata dairies and Yad Mordechai Honey – MF]. Read the rest of this entry »


A Storm in a Coffee Cup

March 20, 2017

This ruling relates to competing rights of different relatives to register and use trademarks for a family business that eventually split up. The marks were registered by a cousin living in Ramallah, and cousins living in East Jerusalem applied to have the marks cancelled on various grounds including passing off, misleading marks, inequitable behavior and lack of use.

234876 LOGOChain Stores of Izhiman Coffee Company own two trademarks: Israel Trademark No. 234876 for the logo shown alongside, and 234877 for the Arabic and English word mark
بن ازحيمان IZHIMAN’S COFFEE.

Maazen and Shapik Izhimian applied to have the marks canceled under Section 39 of the Trademark Ordinance 1972, and further under Section 41 for lack of use.

The marks were first applied for by Muhammad Musa H’alad Izhiman in January 2011, and after examination, were registered on 2 May 2012 for “coffee and coffee spices in class 30.” On 27 February 2014, the marks was assigned to Chain Stores of Izhiman Coffee Company, a Palestinian Company based in Ramallah that was owned by Muhammad Musa H’alad Izhiman and his two sons Kassam and Nasser.

On 5 March 2014, the brothers Maazen and Shapik Izhimian who own a Jerusalem based business in Bet HaBad Street, for marketing and trading in coffee and spices under the name “Izhiman’s Coffee” and who are cousins of Muhammad, submitted a cancellation request. In July 2014, the owners Chain Stores of Izhiman Coffee Company submitted their response.

The Background

EnjoyMuhammad, his three brothers and the Applicants for cancellation are all members of the same clan, that were involved in the family business established by Musa, Muhammad’s father, together with Mahmud, the father of Maazen and Shapik in the 1980s. The company had three addresses, the Ramallah address, the Jerusalem address now run by Maazen and Shapik, and a third branch in Abu Dis.

In 1994, Muhammad fell out with his brothers and nephews and received sole ownership of the Ramallah store. His three brothers and the nephews shared the Abu Dis and the Bet HaBad Jerusalem shops and opened a further outlet themselves in Ramallah. In 2000 the applicants for cancellation and Muhammad’s three brothers opened a fourth branch in Salah Shabati Salahadin Street in East Jerusalem. In 2008, these partners ceased to cooperate, and Maazen and Shapik were left with the Jerusalem Store in Bet HaBad Street.

love.jpgMaazen and Shapik submitted an affidavit written by Maazen and a second one from Riyadh Ghazi Halaq, the owner of a coffee shop near the Bet HaBad address that buys his raw coffee from them. The mark owners responded with an Affidavit by Nasser Muhammad Musa Izhiman, Partner and authorized signatory. At the end of September 2016, the Adjudicator of IP, Ms Yaara Shoshani Caspi held a hearing and the witnesses were cross-examined.
Read the rest of this entry »