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 mark’s canceled under Section 39 of the Trademark Ordinance 1972, and further under Section 41 for lack of use.

The mark was first applied for by Muhammad Musa H’alad Izhiman in January 2011, and after examination, was registered on 2 May 2012 for “coffee and coffee spices in class 30.” On 27 February 2014, the mark 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 »


Frankenstein’s Monster

February 6, 2017

265232.pngIt sometimes happens that a second applicant files a similar trademark application to a previously filed mark that is pending. in such cases, a competing marks proceeding is initiated. the first to file gets some credit for so doing, but the main issue in determining which mark goes on for examination is the amount of usage by the two parties and good faith, or rather bad faith.

If one party is guilty of inequitable behaviour, their application will almost certainly be stayed. Where there are genuine independent filings of two applications for the same or very similar mark by different applicants, such that the second mark is filed before the first one is registered and they are co-pending, then the more widely used, better known and more intensively advertised mark proceeds to examination, and only once this mark is allowed or canceled, does the second mark  proceed to examination, where, in all likelihood, the registration of the first to be examined mark will prevent the registration of the second mark.

frankensteinIP Factor was approached by Best Foods Ltd. to file the logo shown above as a trademark application in classes 29 and 30. An application was filed and received the Application Number  IL TM 265232.

Prior to this being allowed, a second applicant, a Mr Doron Frankenstein filed Israel TM Application 261955 for the identical mark in the identical classes and so, on 10 May 2015, a competing marks proceeding was initiated as per Section 29 of the Ordinance.

On 4 November 2015, the parties were given three months to file their evidence, and were informed that failure to do so would result in their application being considered withdrawn and their application canceled as per regulations 24 and 25.

Best Foods Ltd cooperated with us and we filed their evidence. However Mr Doron Frankenstein did not file evidence and on 1 January 2017, the Trademark Department of the Israel Patent Office gave his attorneys were given seven days notice to file their evidence or their application would be deemed withdrawn.

Essentially Regulation 22 provides a three-month period for providing evidence, and authorized the Commissioner to cancel the application if no evidence is filed, or to grant an extension if reasonable to do so. Regulation 24(b) states that if the conditions of Regulation 22 are not met, the Application is considered as canceled, and the Applicant is informed accordingly.

The period for providing evidence was 14 February 2016 which is long past, so Israel TM Application 261955 to Frankenstein is considered withdrawn, and costs of 2000 Shekels are awarded to Best Foods Ltd. Application Number  IL TM 265232 was examined and has now been allowed.

COMMENT
It seems that Mr Frankenstein was a distribution agent for Best Buy Ltd. It could have been interesting to see who would have prevailed in a competing marks proceeding in such a case, i.e. whether the distributing agent may be entitled to rights in a mark registered locally. However, in this instance, since no evidence was filed, the substantive issues were not addressed.


K -KOSHER – Looking for contributions to Oppose Indian Trademark Application

January 16, 2017

k-kosher

India has the world’s second largest population, its third largest economy and is the second largest producer of food after China.

India is a ‘global hotspot’ for food manufacturers, food producers, and food ingredient professionals. The country is now becoming an integral part of the global food ingredient network and supply chain. Given this trend, India has become one of the most important destinations for food investment, with the food industry growing at an annual rate of 17%. As food exports continue to increase in India, many Indian food manufacturers are required to certify that their products and ingredients are kosher.

In April 2016, Indian trademark Application Number 3243779 was filed by Mrs. Suchi Agarwal trading as AMRIT EXCLUSIF. The mark covers beverages including wine, spirits, liquors, whisky, brandy, rum, vodka, gin and Scotch all included in class 33. Ms Agarwal already has the word mark for leather goods.

Veteran Israel Trademark Attorney Neil Wilkof brought this application to my attention.

 

Wine is a key element in the rituals that mark the onset and end of the Jewish Sabbath and festivals, and features in life cycle events such as circumcision and wedding ceremonies. Perhaps due to its centrality, over the millenia, very stringent manufacturing and storage requirements have been developed that must be met for wine and brandy to be considered Kosher.

Neil’s problem is that the 3243779 mark is misleading in that if applied to the beverages listed, consumers would assume that the beverages are Kosher. On the other hand, no one organization should be able to prevent other manufacturers from using the work Kosher on wines that are manufactured in accordance with Jewish Law, and under bona fide Rabbinical supervision. There are a number of Indian trademarks for Halal marks including 1131733 (wordmark) and 1131732 and 1493214 which are each slightly stylized. A Moslem purchasing meat labeled as Halal would expect it to be from a clean animal that is slaughtered with a knife in accordance with Moslem practice and beverages labeled as Halal to be free from Alcohol. Similarly Jews should be able to expect wine or meat labeled as Kosher to be manufactured and stored in accordance with Jewish Law.

Neil and I have discussed the case with retired trademark expert Professor Jeremy Phillips as well as with the local Indian trademark counsel who brought the application to Neil’s attention. We all believe that there are grounds to oppose this registration under the Indian Trademark Law. The deadline for filing an Opposition is in mid-February 2017. We are happy to donate are time to this cause and I’ve reached out to the officer who handles fraud in matters of Kosher food for the Israel government.

None of us knows any Jewish licensed trademark Attorneys in India, and whilst we believe that Buddhists and Moslems will be sympathetic to the cause, we cannot expect a non-Jewish practitioner to work Pro Bono on this matter. Neil has consulted with the firm in India and it is estimated that the cost of fighting this opposition  could amount to $2000 – $3000. Neil and I are willing to assist the firm pro bono as needed.  If we can now find 20-30 practitioners who will each put $100 in the pot, we will have a budget for fighting this. Neil and I have agreed to put in the first couple of hundred. Please contact either of us if you’d be prepared to help.


Big Deal – The Long Awaited Decision.

January 12, 2017

ynet big-dealAt last we bring you the ruling concerning the registerability of Israel Trademark Application No. 234855 to Yidiot Internet, the website portal of Yediot Achronot in light of previous registered word mark for BIG DEAL owned by a chain of discount stores.

The main issues discussed are whether the existing mark can be considered as a well-known mark and whether there is a likelihood of confusion or evidence of actual confusion between the chain of discount stores and the Internet portal.

For those who’ve missed the earlier chapters in this exciting case, we first reported on this case back in 2014 see here. We then reported on an interim skirmish, and most recently, on a request to strike evidence in September 2016. This is the decision. However, we note that it may be appealed through the courts, so there could be sequels.

The mark was filed in Class 35 back in 2011 for promoting sales of third-party goods via coupons and the like. Ynet purchased the BigDeal.co.il for this purpose back in 2010.

big-deal-storeThe  mark was opposed by H.A.B.Trading Ltd which has run a chain of discount stores called Big Deal since 1993, that peaked at 14 stores and now includes 8 stores selling bargain goods. Since September 2009, H.A.B.Trading Ltd owns Israel Trademark 131862 for the word mark BIG DEAL, also in Class 35, for “stores selling toys, kitchenware, disposables, domestic goods, children’s clothes, books and drawing books”.

The Opposer’s Claims

The Opposer filed and received a trademark application for the term BIG DEAL in capital letters. This means that they have exclusivity to the words, regardless of stylization. They have used the mark and various stylized logos for years. The opposer’s registered mark is well-known, is identified with them and so the Applicant’s mark is not registerable under Section 11(14) of the Trademark Ordinance 1972. Read the rest of this entry »


From Genesis…

January 9, 2017

232991

“Effec-tiv”  Leadership Creation, Organization Development and Training Ltd submitted Israel Trademark Application Number 23991 shown alongside for Education in class 41.

The text of the mark in the Assyrian text that is printed in blue on the stone  says “Leadership from Genesis”. The slogan alongside states “To learn from the past and to lead into the future”.

The From Genesis Spiritual Social Organization (M’Bereshit) opposed the mark under Section 24 of the Trademark Ordinance 1972 and regulations 35-46 of the 1940 regulations. A response was filed on 24 June 2012 wherein the Applicant stated that it would not stand for their right to the trademark registration. The Opposer filed their evidence and the Applicant did not file counter evidence.

 

As the Applicant had both stated that it would not defend the mark and had failed to submit counter-evidence, the mark is considered abandoned and no costs are awarded.

Ruling by Adjudicator of IP, Ms Yaara Shoshani Caspi re Israel TM Application Number 232991 “M’Breshit”

COMMENT

As the Applicant decided not to fight this, it is reasonable to consider them as having abandoned the mark. However, As Julie Andrews sang in the Sound of Music “Start at the very beginning. It’s a very good place to start”.  The M’Breshit organization may be doing laudable work, but that does not mean that they deserve a monopoly for the opening word of the Bible. In modern Hebrew usage From Genesis is somewhat like back to basics, or ABC and, to my mind, the rock and text makes a nice logo that seems to me to be imminently registerable.

 


Discovery In Israel Trademark Oppositions

January 9, 2017

L’Oreal filed Israel trademark application no. 261691 for CARMILANE in class 3 covering cosmetics for hair care, namely shampoos, gels, foams, balms, creams, powders, oils, waxes, serums, lotions, masks; hair straightening preparations; aerosol products for hair care and styling, hair spray, hair dyes and bleaching products, products for protecting dyed hair, hair waving and setting products and essential oils. The application is a national entry of 1187174 under the Madrid Protocol.

The mark was allowed on 30 April 2015, and it then published for opposition purposes.

Sano Factories opposed the mark issuing, and among other evidence, submitted a survey and opinion by marketing researcher Reuben Harari that, from the question asked as a multiple choice option, led L’Oreal’s counsel (Dr Shlomo Cohen & Partners Law Offices) to assume that there had been an earlier survey that produced less than favorable results and that the survey submitted was an attempt to frame the question more favorably. Sano based this assumption with reference to a survey of their own that led to very different conclusions.

L’Oreal’s counsel requested that Sano  and the survey provider “New Wave Surveys” provide full details of the earlier survey. Their initial position is that that the duty of disclosure in legal proceedings is wide and the parties are obliged to make all relevant documents of record. To substantiate this position, they cited widely from the case-law.

On 15 November 2016, Sano’s counsel, Seligsohn Gabrieli & Co, responded that the survey provider is not party to the proceeding and so could not be ordered to provide anything. By its nature, any prior research to the survey that was conducted on behalf of the client that is not submitted is covered by attorney-client privilege and should not be disclosed. They further noted that L’Oreal claimed to have ordered a different survey themselves and so there was no justification for providing any wider survey. Sano’s counsel Seligsohn Gabrieli & Co finally noted that the patent office could have ruled a full disclosure of all relevant documents at any time and never did so, and there was no reason to justify them doing so at this late stage.

Cohen reiterated that the market researcher is obliged to reveal all working papers and raw materials that led up to the survey. Partial revelations by the Opposer’s counsel were damaging to the Applicants procedural and substantial rights.  In this instance where only part of the survey related evidence is made of record, there is a duty of candid disclosure of the rest of it, and no confidentiality. He denied that L’Oreal had conducted a separate survey and considered this irrelevant as to whether Sano was obliged to reveal their survey results in full.

Ruling

Both parties accept that the Israel Patent Office can request disclosure of all documents for inspection in trademark opposition proceedings to enable the parties to relate to the issues with all cards played face up, however, this was contingent on legitimate concerns of the parties such as efficiency of the proceeding.

It should be remembered that the result of proceedings at the patent office, such as whether a mark be registered or not, has public interest in that a registered mark makes private property out of something hitherto in the public domain. This makes it desirable for all evidence to be in the open.

The considerations regarding the duty of disclosure of documents in trademark cases was ruled by the then commissioner, in Opposition to Patent 60312 Genentech vs. Bio Technology General Corp 24 June 1999 as follows:

The possible damage to the efficiency of the proceeding due to the time at which a request to make evidence available, the amount of evidence, its subject matter, the importance of the claim that the evidence is supposed to clarify, the evidential weight, the possibility that the opposing party can obtain the evidence himself and the aggravation it causes the opposing party.

In this instance, the evidence is market research which may or may not have been undertaken by the Opposer. The request is based on the Applicant’s assumptions that since the Opposer submitted one type of survey, there must have been another type that provided undesirable results. The adjudicator of IP rejects these assumptions as an appropriate basis for demanding disclosure of documents.

It is stressed that the parties are allowed to submit only positive evidence, so long as they submit each piece of evidence in its entirety and do not submit only parts of documents.  The Applicant is entitled to full disclosure regarding a market survey in terms of the questions asked, the breakdown of the population surveyed, the way the results were analyzed and so on. However, Ms Shoshani Caspi did not consider earlier preliminary surveys that may or may not have been conducted were ‘raw material’ that is indivisible from the survey submitted.

Ms Shoshani Caspi noted that the opposition had reached the end of the stage of submission of evidence and before the hearing, . She therefore considered that allowing the request would inevitably prolong the proceedings as the Opposer would be obliged to submit additional evidence. The Applicant would then wish to submit additional evidence and the Opposer would have the right to respond. This would inevitably drags things out and delay a ruling on the dispute. It may be assumed that the additional material is not extensive. However, it is not clear that this material (if it exists) has evidential weight regarding the market survey. The Applicant does not know if such a preliminary survey exists and if so, how it was conducted or what the results were so the Applicant cannot state with certainty that such a survey has evidential weight. Such a request creates unjustifiable work for the Opposer, as it damages their procedural and substantial rights.

The correct way to attack survey evidence brought by the opposing party is by conducting a counter survey. If one party considers that a survey was improperly conducted they should do a proper survey themselves to support their allegations. The present request seems to be a ‘fishing expedition’ for evidence.

 

The patent office considered that at the stage reached, it would create unnecessary and undesirable delays to allow such a request. In the scheduled hearing, the evidentiary weight of the surveys submitted will be considered and each side may attack the results of the surveys brought by the opposing party. The request is refused. No costs are awarded.