Trademarks in Mandatory Palestine

January 17, 2018

Michael BirnhackProfessor Michael Birnhack of Tel Aviv University is lecturing to the Israel Patent Office on 24 January 2018 at 10:00 to 11:15 am on “Trademarks during the British Mandate”.

Professor Michael Birnhack is Associate Dean for Research, and a Professor of Law. He is the Director of the S. Horowitz Institute for Intellectual Property in memory of Dr. Amnon Goldenberg, and the Director of the Parasol Foundation International LL.M. He researches, teaches and writes about intellectual property, privacy law, information law, and law and technology.

Everybody is welcome but one has to register by email to Tamar Koby at tamark@justice.gov.il.


NOCTUROL

December 20, 2017

NocturolWellesley Pharmaceuticals LLC submitted Israel Trademark Application No. 284926 for NOCTUROL; a Pharmaceutical preparations for reducing frequency of urination in Class 5.

NocturnoUnipharm, a large Israeli generic drug manufacturer and distributor that sells the mild hypnotic Zopiclone as a treatment for insomnia under the brand-name NOCTURNO opposed the mark on 10 September 2017.

On 11 September 2017, the Court of the Israel Patent & Trademark Office gave Wellesley Pharmaceuticals two months to file a counter-statement of case.

The deadline of 11 November 2017 passed without a  a counter-statement of case being filed, and on 20 November 2017, Unipharm requested that their Opposition be accepted and the application refused.

Section 24(v) of the Trademark Ordinance states:

If the Applicant does not submit such a response, it is as if they have abandoned their mark.

The Opposition to Israel Trademark Application No. 284926 is thus accepted.

In general, the prevailing party is entitled to costs. The considerations are the time involved, complexity, work done, equitable behavior, etc. Under her Authority given in Section 69, the Adjudicator, Ms Yaara Shoshani Caspi, ruled costs of 2000 Shekels including VAT.

COMMENT

Notably, the director of Unipharm, Dr Zebulun Tomer (who has more experience in patent oppositions than any mere lawyer or patent attorney) filed the trademark Opposition himself, without involving their legal counsel Adi Levit.

As Unipharm did not use legal counsel, they are not entitled to costs. This is clear from Patent Oppositions where they prevailed in similar circumstances. The cost ruling was given without sides requesting costs and is appealable to the District Court. However, the I would be surprised if Wellesley contests it.


ENVY

December 20, 2017

276449Bacardi & Company LTD filed Israel Trademark Application Number 276449 consisting of a stylized mark comprising a pair of wings and the words ANGEL’S ENVY, the mark is for alcoholic beverages, except beers in class 33. They also filed Israel Trademark Application Number 275692 for North American whiskey; alcoholic beverages based on, or flavoured with North American whiskey.

ENVYLa Fée LLP filed Israel Trademark Application Number 278588 for ENVY as shown. The mark covers Spirits; absinthe; alcoholic beverages containing spirits; alcoholic beverages containing absinthe in Class 33.

(Absinthe  is an anise-flavoured spirit derived from botanicals, including the flowers and leaves of Artemisia absinthium (“grand wormwood”), together with green anise, sweet fennel, and other medicinal and culinary herbs. In other words, it seems to be a type of Arak,

angel's envyBacardi’s marks were filed on 31 March 2015, and La Fée’s marks were filed on 27 July 2016, before Bacardi’s marks were examined. As the marks were co pending, a competing marks proceeding ensued. On 26 June 2017 the parties were given three months to submit their evidence regarding their rights to the marks.

On 13 September 2017, La Fée LLP submitted an unclear communication that related to priority. On 14 September 2017 the Israel Patent Office requested clarification and asked if the submission was a type of evidence. However, La Fée did not respond. On 26 October 2010 after requesting and obtaining extensions, Bacardi submitted their evidence. In view of the lack of response from La Fée, on 7 November 2017, the patent office sent them a letter giving a grace period of a week to submit their evidence. However, La Fée LLP did not respond.

Section 67 of the Trademark Ordinance 1972 states that

Subject to any regulation under this Ordinance, evidence is proceedings before the Registrar shall be by affidavit under section 15 of the Evidence Ordinance (New Version) 5732 -1971, or by declaration made abroad under the law of the place where it is made, so long as the Registrar does not otherwise direct; but the Registrar may, if he thinks fit, take oral testimony in lieu of or in addition of written evidence, and may permit the deponent or declarant to be cross-examined.

In this instance, La Fée did not submit any affidavit and there does not seem to be any justification for them failing to do so.

Consequently, regulation 25(b) applies:

If the Applicant fails to submit a detailed response within three months of the invitation to do so, the Applicant will consider the Application as cancelled under Section 22 of the Ordinance and a notice to that effect will be sent to the Applicant.

Since La  Fée chose not to submit evidence at all, and not to respond in any way to the Queries from the Court of the Patent Office, the Adjudicator, Ms Yaara Shoshani Caspi ruled that filed Israel Trademark Application Number 278588 for ENVY be considered abandoned, and Bacardi’s marks proceed to examination.

Using her powers to rule reasonable costs under Section 69 of the Ordinance, noting that Bacardi did exert effort in responding and Le  Fée’s behavior, she ruled that le Fée pay 15000 Shekels costs (excluding VAT) to Bacardi within 14 days or the costs will be index linked and bear interest until paid.

Competing marks ruling concerning 276449, 275692 and 278588, Yaara Shoshani Caspi , 16 November 2017.


Black Box Trade Dress

December 12, 2017

2525230

Sea of Spa Laboratories have submitted Israel trademark application number 285230 for a three-dimensional stylized trademark as shown alongside, for Mineral bath salts and mud masques (not for medical purposes), body butter, body peeling aromatherapy cream, body cream, Aloe Vera cream, Cosmetic creams and lotions, moisturizing cream for the face and baldpate, shampoo, soap, liquid toilet soap, shower gel, toothpaste, deodorant, perfumes, after shave balm (not for medical purposes), all being produced from or enriched with minerals from the Dead Sea; 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 all in class 3 and for on line advertising on a computer network; online retail store services for the sales of cosmetics, body care products, soaps, perfumery, essential oils, hair lotions, toothpaste and deodorants; direct mail advertising; Organizing and conducting trade fairs, events and exhibitions for commercial or advertising purposes; dissemination of advertising and promotional materials; distribution of products for advertising purposes; product merchandising; commercial business management; business management of wholesale and retail outlets; retail or wholesale services for cosmetics, toiletries, dentifrices, soaps and detergents in class 35.

From clarifications with the Applicant, it appears that the mark is meant to be a black box, with silver edging to the panels. The Applicant clarified that the requested protection is for boxes of different shapes and sizes, but which are all black with silver trim along the vertices.

The request for registration was submitted on 25 May 2016 with a request for expedited examination based on alleged unauthorized usage by third parties.

circular

The trademark department refused the Application. In a first Office Action on 29 August 2016, the Examiner considered that the mark was not registerable as a trademark, being a three-dimensional package or container, lacking the required distinctiveness under Section 8a to be registered as a trademark. The Examiner considered the mark as contravening Circular 032-2015 “Trademarks: Requests for Three Dimensional Marks”, from 18 March 2015. The Examiner also considered that the correct way to protect such marks is as registered designs.

black pearl

On 12 January 2017, the Applicant responded with the argument that the mark had acquired distinctiveness due to wide usage. This contention was supported with an Affidavit from MR Avitar Glam, the CEO of the company who claimed that the Black Pearl series of products were packaged in such boxes from 2013 onwards, and that the Applicant had spent tens of thousands of Shekels in rebranding. Supporting evidence was appended to the Affidavit.

On 2 March 2017, the Trademark Department wrote that the response of the Applicant was insufficient to conclude that the silver trimmed black boxes without the addition of additional elements on the package were sufficient to be considered as having the acquired distinctiveness required for registration as a trademark.

The Applicant responded by requesting a hearing.

Applicant’s Claims

The Applicant considers that the registration of the requested mark will provide appropriate protection against competitors using similar packaging to theirs. The Applicant considers that the registration will not adversely affect competition in the market place since there are very many different ways of stylizing packages.

The Applicant considers that when considering three-dimensional marks for packaging the Examiner should differentiate between the basic shape and the requested mark. The Applicant considers that Circular 032-2015 fails to make this distinction and is thus deficient.

With this, the Applicant considers that the applied for mark still fulfils the basic conditions outlined in Circular 032-2015, since it is uniquely identified with the Applicant due to continuous usage since 2013, with investment in advertising and promotion of the mark. The Applicant denies that the packaging has a real functional or aesthetic purpose, but rather serves to make the product stand out on the shelf, and is thus a registerable mark.

Discussion

toffiffee

Three-dimensional marks that are the shape of the package are registerable if the owner can prove acquired distinctiveness through use. See 11487/03 August Storck et AL.. vs. Alpha Intuit Foodstuffs ltd et al. (23 March 2008) “Toffiffee”. In that matter, the Supreme Court pointed out a difference that can occur between allowing trademark registration of the shape of a product itself, and allowing a three-dimensional registration for its packaging. However, the Supreme Court left open the question of registration of packaging as a trademark on the basis of inherent distinctiveness:

It appears that the risk of preventing competition by allowing registration is bigger, when registering the shape of the product, than when registering the shape of the good itself.  (See re Phoenician Glass, paragraph 17). Consequently, I have decided to leave open the question of registration of three-dimensional marks consisting of the package on the basis of inherent distinctiveness.

Circular 033/2016 –Trademarks: Emphases when Examining Trademarks, from 15 December 2016, is the third reincarnation of Circular MN 61 which relates to the registerability of three-dimensional trademarks. The Circular applies the tests developed in Toffiffee, and does not relate to the difference between the shape of the product, and the shape of the package. Since this distinction was left open in the Toffiffee case, a Commissioner’s circular is not the right place to determine this. To complete the picture, when the Application was examined, the Circular in effect was 032/2015 – Trademarks, and so that was the Circular that the Examiner referred to in the Office Action. That said, all three circulars state that when considering the registerability of three-dimensional trademark applications:

One can consider the registerability of three-dimensional marks in cases where it is proven by evidence that the following three conditions are fulfilled:

  1. The requested shape serves as a trademark
  2. The requested shape does not serve a real aesthetic or functional purpose
  3. Through usage, the shape has acquired distinctiveness

The wording of the Circular is problematic. It relates to shapes or forms, and not to colour schemes on packages.

Before discussing whether the mark fulfills the requirements of the case-law and the Circular, there is a preliminary question to be addressed, in whether the colour scheme can be considered a mark since the proportions of the box, and thus of the surface panels varies. A similar issue was dealt with by then Commissioner Dr Noam with regards to Israel Trademark Application Numbers 182676, 182677 and 182679 to MANN+HUMBEL GMBH from 19 August 2008. There a mark was requested from a green and gold box with a white line separating the green and gold, in all shapes, i.e. without providing a ratio between the colours. There the Commissioner ruled:

From that written, it seems that we are referring to a mark that is so fluid that it is doubtful whether it is a mark at all. From consideration of Mr Ivor’s Affidavit, together with screen prints from the website of the Applicant, it seems that we are dealing with a concept, with a design idea that combines green, gold and a dividing white line that is expressed in different ways in the website, the packaging and the company’s catalogues.

A basic known principle throughout the branches of intellectual property law is that intellectual property does not protect ideas, but rather embodiments of those ideas.

So the then Commissioner ruled that the registration of insufficiently defined marks is inappropriate.

The applications as filed, if they issue, will totally remove from the public domain the use of two colours on any box. This is an unreasonably wide monopolization that creates legal uncertainty.

The Deputy Commissioner Ms Jacqueline Bracha opined that in this instance, we have a “design concept”, which is too broad to be a trademark. In this regard, it is worth considering the definition of a mark in James Mellor, David Llewelyn, Thomas Moody-Stuart, David Keeling, Iona Berkeley Kerly’s Law of Trade Marks and Trade Names”, 15th ed. (2011) p. 17.

black pearl 4However, even if we consider the mark as sufficiently defined, one has to assess acquired distinctiveness on the basis of whether the public recognize the mark. From the evidence it appears that the Applicants do not brand themselves only with the applied for mark, but always together with the term “Black Pearl” and a picture of a pearl. These always appear clearly on the packaging. The public do not merely recognize the applied for mark as being a trademark, but the Applicant itself does not consider it to be a trademark. From Appendix 7 which lists the sales, it is clear that the series is referred to as “Black Pearl”.

black peral 3

In the website of the Applicant, (appendix 1 to the Affidavit), the series is referred to as the Black Pearl Line, and in the US website is www.blackpearlusa.com most of the products are shown without packaging at all, which shows that the requested mark is not being used as a mark [and therefore cannot have acquired distinctiveness –MF].

The Applicant did not submit any evidence as to how the consumer considers the requested mark, but does note that sometimes the package on the shelf is viewed from the back. The Deputy Commissioner does not consider the fact that a consumer could return a box to the shelf such that the front is obscured as sufficient justification to consider the mark as being identified as trademark by the consumers. (see paragraph 13 of Appeal 59175-12-12 Stokke AS vs. Commissioner of Patents and Trademarks, 26 November 2013.

In light of the above, the Deputy Commissioner does not consider that the Application serves as a trademark.

Although not necessary, the Deputy Commissioner continued to consider the other conditions for registerability outlined in the Circular.

The Applicant submitted data regarding the branding, which included the design of the packaging and information regarding sales. The Deputy Commissioner noted that it is not enough to show sales but one has to show a link between sales and the mark to show that the requested mark to shows that the requested mark generates sales and the burden of proof is significant. See 18/86 Israel Glass Factory Phoenicia ltd. vs. Les Verries de Saint Gobain, p.d. 45(3) 224, 238 and Appeal 2776/06 Ein Gedi Cosmetics vs. Commissioner of Patents and Trademarks, 12 May 2008.

Where a product has several trademarks alongside each other, it becomes even more difficult to show that one or other of them has individually acquired distinctiveness. See Deputy Commissioner’s ruling regarding the Trademark Application Nos. 216872, 216873 and 216874 Proctor & Gamble (2012):

We are considering marks serving as backgrounds for words such as “Herbal Essences” and the flower image around the neck of the bottle. (see Appendix D of Ms Rosnell’s affidavit). Furthermore, the applied for marks do not include all the background elements, since it was filed in grey.

See also the comparative law for packaging serving as backgrounds for other marks, in 180843 Baltika vs. S&G Intertrade ltd (2012):

The mark before me is merely a generic background for a beer bottle. There is no problem per se with registering a label as a trademark, if it fulfills the conditions of the Ordinance, and in comparison with the US Law, and Jerome Gilson “Trademark Protection and Practice”, p. 2-162 (2002):

“It should be noted, however, that packaging design which is primarily background for a word trademark must make a separate commercial impression in order to be eligible for separate protection.”

With regard to registering bottles as trademarks, it is sometimes worth considering whether the applied for mark has a form that is typical for the field – see Adjudicator of IP in re Israel TM Application 174402 Diageo North America, Inc. from 13 April 2011, and the Cointreau bottle ruling from 2 April 2013. It seems that the more unusual a bottle is, the more easily it can be considered as having acquired distinctiveness, and so can be registered as a trademark.

From an Internet search it transpires that there are other companies using a black box with a frame (Commissioner’s discretion to search independently is discussed in the Rishon L’Zion Winery vs. the Vineyard ltd. (4) 338, 2006. See for example:

Aroma

These packages are just a couple of examples of the many black packages that appear on the Internet, which are decorated with gold or silver, and are used for packaging cosmetics. Although they are NOT identical to the Applicant’s packages, they do indicate that the applied for mark does not stand out from other cosmetic packages on the market.

The Deputy Commissioner did not see fit to consider the question of whether the packages serve a functional or real aesthetic purpose, but it seems that they were designed as part of a branding exercise designed to give a quality image, together with the black pearl. However, this is beyond that required.

Since it is not clear that the application is a mark, and in light of the conclusions that it is not clearly a trademark that has acquired distinctiveness through use, the application for registration is rejected.

Ruling re Black Pearl Package Trademark by Deputy Commissioner Ms. Jacqueline Bracha, 1 October 2017.

COMMENTS

It is difficult to argue that a cuboid or brick shaped box is anything but a functional package. It is also difficult to argue that the black and silver choice of colouring is not designed to be aesthetic. However, I am not sure that the Circular is properly worded, and this case seems to me to be more a question of a flat trademark applied to a box, rather than a three-dimensional mark.

The issue here is NOT one of three-dimensional marks, but is rather one of trade-dress. A single colour trade-dress is probably not sufficiently distinctive. In most places, Cadbury’s distinctive purple was not considered sufficiently distinctive to be registered itself. ‘Laline’ makes beauty products and has simple white packaging, which is a brilliant attempt to market themselves as pure, but can plain white boxes be considered distinctive? Here, there are two colours, and one is a frame. In other words, it is a little like the National Geographic yellow frame on their magazines. However, there is a second colour; the basic black as well.

 

national geographicThen again, National Geographic has a very long history, massive circulation, and back copies seem to lurk indefinitely in waiting rooms at doctors and dentists. I suspect many kids first saw photos of naked human bodies in National Geographic magazines that seem to be more favoured by school libraries than men’s magazines.

Also, the dimensions of the National Geographic magazine is standard, and the company is using the yellow frame as a trademark on videos, their TV channel, and various merchandise.

So in this case, there is really a two-dimensional mark of a silver frame on around a black rectangle. Since the dimensions change, it is really a trade dress and is not constant enough to be registered as a mark. Even if not registerable as a trademark, it may still be enforceable under the tort of passing off and unjust enrichment. Since accelerated examination was requested for the mark on the basis of a competitor using it, one wonders if it really is exclusively associated with the Applicant. As the Deputy Commissioner has shown, the colour scheme is not unique to the Applicant.

If one examines the website, there are boxes that are all black with a silver label, and gold boxes with the writing Black Pearl on them. There are also black squeeze tubes with silver writing. In other words, the trade-dress is not used consistently. There are other cosmetics using silver on black, particularly but not exclusively designed for usage by women of colour (or whatever the current politically correct term is).

Although relating to a ruling concerning colour schemes which is essentially a trade dress related decision, the Deputy Commissioner has essentially examined the mark in light of the Circular governing three-dimensional marks. To my mind this is the wrong approach. A better starting point would be to consider the ice-creamcoffee and energy drink rulings.


Israel Supreme Court Upholds Decision Re Appellation of Origin

November 26, 2017

cheese and wineIsrael is a member of the Lisbon Convention for the Appellation of Origin. This is an international convention beloved of the French and frowned upon by the common law countries. Essentially food and drink associated with certain places is entitled to wider protection than mere trademark protection, so that only Scotland can make Scotch Whiskey. Only France can make Champagne and Cognac. Parmesan cheese and hams must come from the Parmesan region of Italy, and so on.

There are now two Israeli whiskey producers. Israel makes Kosher bubbly wine and brandy and a very wide range of cheeses that mimic English, French, Italian, Dutch and Greek types. The labeling is carefully controlled in accordance with the rules.

Israel boasts one Appellation of Origin: Jaffa for citrus fruits.

jaffa orangeCalling something Jaffa, Jaffas, or in Hebrew יפו, יבא, יפאס is not merely a trademark infringement, but also infringes the special law governing this appellation of origin “The Law for Protecting Origins and Indication of sources 1965” gave special protection for Jaffa and variant spellings for citrus fruits. Subsequently, special amendments to the Trademark Ordinance in 1968 widened the protection of the Jaffa mark to prevent its usage for a wider range of goods, and forbade marks that include the word Jaffa as only part of the mark. The amendment to the trademark ordinance takes this protection very seriously, and instead of merely providing financial remedies, prescribes incarceration for infringers.

126 EL AL Poster, Two Flight Attendants in Orange Uniforms by 747, Marvin G. Goldman Coll'nelal posterBack in the Sixties, Israel was a banana an orange republic. The largest export sector was fruit and vegetables and oranges were the flagship product. The posters alongside, used by ELAL – Israel’s national airline gives an indication of the importance and symbolism of the orange in that era.

The Council for Producing Plants and Their Marketing owns rights in the word Jaffa as a geographical application of origin.

Yehuda Malchi tried to register Israel Trademark Application Numbers 20542 and 220581 for OLD JAFFA, for preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; all included in class 29 and for coffee, tea, cocoa, sugar, rice, semolina, tapioca, coffee substrates, cereals, breads and baked goods, sweets, ice-creams, honey, yeast, baking powder, salt, vinegary sauces (flavorings) and spices in class 30, respectively. Israel trademark no. 237678 covering soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3 had previously issued without opposition. In an action combined with an opposition by the Council for Producing Plants and Their Marketing to Israel Trademark Application Numbers 20542 and 220581 , the Israel trademark 237678  (Old Jaffa) was canceled. The ruling may be found here.

Having appealed the Israel Patent Office ruling and that of the District Court, Yehuda Malchi appealed to the Israel Supreme Court.

EtrogJudge Hendel’s ruling included an interesting side comment in which he noted that Chief Rabbi Kook, who was the Chief Rabbi of Jaffa and the surrounding agricultural villages from 1904 until the outbreak of World War 1, had backed a campaign to promote using Jaffa etrogs (citrons) for the Sukkot ritual, rather than those from Korfu and Italy, which held much of the European market. Judge Handel thus argued that Israel was traditionally blessed with citrus fruit and that Jaffa was the hub of the trade a hundred years ago.

Hendel also noted that very little of the sprawling urban conurbation around Jaffa is devoted to agriculture today, but since the amendment to the Trademark Ordinance explicitly prevents use of Jaffa as part of a mark, the phonetic or visual similarity between JAFFA and OLD JAFFA is not relevant. He thus upheld the District Court’s ruling.

COMMENT

I am naturally formalistic (which is considered a dirty word in Israeli legal circles), and generally think that where the democratically elected legislative passes a clear law, the judges should follow that law. I am against judicial activism which I see as undermining the Knesset. (That is not to say that recent government attempts to prevent charges being brought against active ministers, to prevent the Prime Minister from being indicted for corruption are the finest examples of parliamentary legislation).

Nevertheless, I think that Judge Hendel could have and should have struck down this law providing wide and special protection for Jaffa oranges. The reason why is not merely that the brand does not indicate oranges from the Jaffa region grown by Jewish agriculturists on Kibbutzim, but rather that it does not indicate oranges grown in the contested region of Israel – Palestine at all! In order to provide year round supplies to world wide markets, oranges grown in South Africa and Australia are sold under the Jaffa brand. Thus the unique and distinctive taste of Jaffa oranges is not a result of the terroir of the Holy Land at all.  This travesty means that BDS supporters are not merely depriving Arab orchard owners with Thai foreign workers of their livelihood in an attempt to harm Israel politically, but are also harming the black workers in townships around Johannesburg.

Since the Council for Producing Plants and Their Marketing does not restrict usage of the mark to Israel grown oranges, why shouldn’t the special designation be cancelled?

In fairness to Judge Hendel however, we note that Yehuda Malchi was not represented and suspect that the sad state of affairs described above is unknown to him.

For the record, we note that it is ill-advised to appeal to fight legal battles, including submitting Appeals to the Supreme Court without legal representation.


Coffee Whitener Trademarks in the Gaza Strip

November 6, 2017

city creamerClients sometimes ask about whether or not it is worth registering trademarks in the Gaza Strip. Recently, we’ve been handling the destruction of fake plumbing goods destined to Gaza, that were stopped at the Israel Port of Ashkelon. Delivering papers in Gaza is not easy. It can, however, be done.

Qumsieh is a Jordan firm of patent attorneys that handles IP registration across the Middle East. On behalf of their client, Bilal Mohammad Al Hamwi, on 20 May 2014, Qumsieh submitted a Gaza Trademark Application for City Creamer, a coffee whitening milk substitute that comes in powder form, in class 29. The application was assigned number 18963, and published in the Official Gazette number 54 on 28 May 2015.

coffee mateSociété des Produits Nestlé S.A. (“Nestlé”), the owner of trademark “Coffee Mate” filed an opposition against Al Hamwi’s mark based on their earlier registrations for “Coffee Mate” based on the following grounds:
An alleged Similarity between “City Creamer” and “Coffee Mate” in terms of appearance and general look;
Coffee Mate is a well-known trademark worldwide;
Registration of the opposed mark will mislead the public about the origin of the products and will confuse the consumers between both products, and
Due to the above, allowing the registration of “City Creamer” contradicts local Trademark Law.

In their response, Qumsieh noted that “City Creamer” has no counterpart “mug design” mark to that of Nestlé’s mark, however Nestlé argued that this was irrelevant. Opponent dismissed as irrelevant. Qumsieh also argued that the figurative elements illustrated the differences in the imagery, which far outweighed the alleged similarities.

The Gaza Registrar ruled that the “City Creamer” mark could be registered. Apparently Nestlé appealed said decision before the Gaza Supreme Court, which affirmed the decision of the Registrar.

COMMENT

The colour schemes of the two marks are similar, but coffee is a product that is generally drunk warm and the orange-red colour implies a warm cosy feel. The term creamer, like coffee, is generic. Showing a powder additive for coffee as a spoon for adding to coffee seems to me to be descriptive, and despite the similarities which are probably not coincidental, I think that the Gazan authorities made the right decision. It is worth comparing this ruling to the Israeli rulings concerning energy drinks and the Eden Turkish Coffee.


Increase in Official Publication Fees in Syria

October 3, 2017

200px-Flag_of_Syria.svgOn 28 August 2017 the Syria Minister of Internal Trade issued Ministerial Decree No. 2133 announcing an increase in the official publication fees for new trademarks and renewal applications, as well as for publication for recordals of assignment, mergers and changes of name and address.

The decree will become effective on 15 October 2017 affecting applications pending publication, as follows:

Item Old Price New Price
Publication fees for accepted applications in the Official Gazette (for a list of goods of 10 words) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees after registration in the Official Gazette (for a list of goods of 10 words) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees for renewal applications before acceptance (for applications filed or renewed before April 2007) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees for renewal applications after issuing the renewal certificate (for applications filed or renewed before April 2007) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees for renewal applications after acceptance (for applications filed or renewed on or after April 2007) SYP 35000
USD 70
SYP 100000
USD 200
Fees for additional group of 10 words in the list of goods and services SYP 500
USD 1
SYP 1500
USD 3
Publication fees for the recordal of assignment SYP 25000
USD 50
SYP 50000
USD 100
Publication fees for the recordal of merger SYP 25000
USD 50
SYP 50000
USD 100
Publication fees for the recordal of change of name SYP 25000
USD 50
SYP 50000
USD 100
Publication fees for the recordal of change of address SYP 25000
USD 50
SYP 50000
USD 100

Renewals of trademarks filed or renewed before April 2007 will be published twice, the first time after acceptance and the second time after the issuance of the registration or renewal certificate. Trademarks filed or renewed after April 2007 will only receive one publication notice, after acceptance.