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 »


YALA and YA’LLA TOURS Can Coexist in Tourism Industry – No Likelihood of Confusion

May 11, 2016

The word YALA is Hebrew slang for ‘Get a move on!’

The Fattal chain of Israel hotels filed Israel Trademark number for the stylized mark “YALA” shown below. The mark covers advertizing and hotel related services in classes 35 and 41.

265772

The Applicant filed for expedited examination and was allowed, but a copy of the Notice of Allowance was sent to Ronen Paldi who owns Israel trademark 97324 and who duly filed an Opposition. Ronen Paldi has a very different looking stylized mark for YA’LLA TOURS shown below. The mark is in class 39 and disclaims the word tours.

97324 Ya'alla

The Opposer claims to organize tours in Israel and to work with Israeli hotel chains. He claimed that Fattal’s application was confusingly similar and lacking in distinctiveness and allowing it was against the public interest since the filing was based on inequitable behaviour. The Applicant denied this and claimed that there was no confusing similarity between the two marks because the services provided under the marks was different. The Opposer’s advertising was mostly in the US and under the Ya’lla Tours USA mark and not under the mark as registered. The Applicant went on to note the different distribution channels and customer base.

The parties filed their evidence. The Opposer  filed a statement in which he laid out his factual claims. The Applicant filed a statement of Mr Nadav Fattal who is the Digital Advertising Manager of the Fattal group.

OPPOSER’S CASE

Mr Paldi testified that he had established his company in 1993; originally as a tour pilgrimage organizer and later as  an organizer of tours to the Middle East, the Persian Gulf, Greece and Turkey. The mark was chosen back in 1993 since it reflects the Middle East but is recognizable to Western ears. Mr Paldi stated that he uses his mark on coaches used to carry tourists in Israel and on publicity and Internet materials distributed in Israel and elsewhere. Over the 23 years since founding the company, the business has company has done some 20 million shekels worth of business in Israel. Mr Paldi also owns the Internet domain http://www.yallatours.com.

APPLICANT’S CASE

Mr Fattal stated that his intention was to use the mark to advertise last-minute hotel deals. The company runs hotels in Israel and Europe and the App. was intended for use by Israelis, whereas the opposer’s services were aimed at foreigners abroad and any usage in Israel was with service providers and not end users. The App. had been downloaded 80,0000 times and had generated sales of 1.5 million shekels.

RULING

Citing the Bible Seligsohn, “Trademark and Related Laws”, p.p 20-21, 1973, the Deputy Commissioner Ms Jacqueline Bracha noted that ‘lack of distinctiveness’ is assessed objectively with regards to the distinctiveness scale, to ensure that words that should remain in the public domain are available for use by the public. ‘Lack of distinctiveness’ is not with respect to specific competitors marks. She did not consider the word descriptive for tourism services and rejected the argument that the mark lacked distinctiveness.

As to whether the mark is confusingly similar to the competitors, citing Taam Teva vs Ambrosia, and the Family Magazine ruling, she noted that this should be examined by applying the five six part triple-test of:

  1. appearance
  2. sound
  3. customer base
  4. sales channels
  5. everything else of relevance
  6. common sense

Sight and Sound

Whilst making due note of the first impression, dominant elements and everything else, the marks look very different, since one is monochrome and the other is very gaudy. The graphical elements are different.

However, the dominant word is Yala (Ya’alla). Citing the Clearasil – Stayclear decision, the Deputy Commissioner ruled that despite the word ‘tours’ being generic, one still has to consider the mark in its entirety.  Although the visual similarity is negligible, there is some audible similarity. As clarified in Appeal 5066/10 Angel vs. Berman (30 May 2013):

The relative consideration given to the visual and audio aspects of a mark depend on a number of variables, including the type of product in question. Thus with products removed by the customer from the shelf, the visual aspects are given more weight, but with goods ordered over the counter, the sound of the name is more important.  

The applicant’s mark is used as an App and the visual aspect dominates. The Opposer’s mark is different in that tourist services are referred to by name and the sound of the mark is thus as, if not, more important than its appearance.

Furthermore, one cannot separate the audible and visual aspects of a mark. As stated in “Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 313:

“So, for example, it is possible that a mere phonetic similarity between trade marks may create a likelihood of confusion. On the other hand, the degree of phonetic similarity will be of less importance if the goods are marketed in such a way that the relevant public will usually see the trade mark, or if one of the marks has a clear conceptual meaning. All will depend upon the global assessment.”

Anyway, the appearances of the marks are very different and the pending mark is unlikely to be heard whereas the registered mark to the opponent is likely to be sen and said. Ms Bracha concludes that the visual aspect is dominant and the likelihood of confusion is negligible.

Services and Customers

The tests for assessing the types of services and customers is given in Seligsohn, “Trademark and Related Laws”, p.p 82-83, 1973, based on the British case-law as follows:

  1. What is the nature of the goods and their constituents?
  2. How are the gods used?
  3. What are the regular distribution channels?

 If any of these are similar it is fair to conclude that the goods are similar but the third consideration appears to be less weighty than the others.

As per the Omni ruling, where the marks compete, one should consider if they are offered on the same shelf (metaphorically as well as literally).

There is a vast difference between last-minute hotel deals and organized tours. The services do not compete in the sense that one is unlikely to take advantage of a last minute hotel vacancy in Israel or choose a tour of Turkey that is advertised in the US.

The marks are not even complimentary in that the same customer is unlikely to purchase both services.

The App is aimed at Israelis and is in Hebrew.  Apart from words like deluxe, the interface is in Hebrew and so although technically a Norwegian tourist on a tour could download and use the App in practice this would not happen.

The Opposer lives in the US, offers services in the US and trades under the name Yalla Tours USA. Business in Israel is confined to ordering from the Israel tourism industry. The goods and distribution channels are very dissimilar.

Everything Else

The Opposer claims that the Applicant was aware of their registered mark and selected the application to build on the Opposer’s reputation. The Deputy Commissioner did not find this argument persuasive since the customer base is so different. Even if the Applicant was aware of the Opposer’s mark the claim of building on their reputation is not substantiated.  Furthermore, the cross-examination demonstrated that Mr Fattal, whilst ultimately providing the Opposer’s company with services, does it through local tour operators and claimed to be unaware of the Opposers’ services.

The Opposer’s arguments are rejected and the Deputy Commissioner concludes that the  marks are not confusingly similar. As an afterward, although the Opposer claimed that their mark was well-known, this claim was unsubstantiated.

Verdict

The opposition is rejected and the Opposer is ordered to pay 30,000 Shekels costs within 30 days or interest will be incurred.

Ruling re 265772 “YALA”, Ms Bracha, 20 April 2016

COMMENT

There is a judicial concept of related goods. It is not inconceivable for one service provider’s service to be associated with an other. Frankly I think that in tourism, the service provider is rarely of interest. People look at destination, what they are getting, and the cost they are paying. Although either or both can expand their services or branch out into similar services.Whilst current usage by the parties could change, trademark rulings can always be revisited for ever, as marks can be renewed for ever.  The decision looks radical prior to being analyzed, but is nevertheless convincing.

One final point. the Deputy Commissioner is aware that American tourists who book tours do not know if they will be staying in Fattal hotels and Mr Fattal may indeed not know that a group has booked via Ya”alla Tours since local tour operators mediate. However the tourists see Ya”alla Tours on their buses. Certainly Jewish tourists from the US may subsequently live here. People seeing Ya’alla tour buses mighty identify them with the App. There is room for consumers to assume a connection and for the activities of one company to impact the reputation of the other. Possibly this will be symbiotic and positive and to the advantage of both. One company chose a word because it means ‘get a move on’ and they are offering last-minute special deals. The other company chose the word since it is Arabic and is easily memorized to Westerners. It is not like Jihad and does not have negative connotations, and is noy like Hummous which is actually pronounced differently by Westerners than by Arabs, and doesn’t have connotations of coming in a plastic container and must be kept refrigerated to avoid stomach upsets. In other word, the two parties chose the same term for slightly different reasons.

 

 

 

 

 


Amad Arabiyah Wins Injunction and Damages from 13 Bootleg Distributors.

June 24, 2015

Arab Music

Amad Arabiyah Music Management and Distribution LTD sued 13 different shops in the Nazareth District Court. The shops had sold Music CDs and had stocks of pirate compact disks and were accused of contributory copyright infringement. Due to the similarity of the cases and the common plaintiff, the cases were combined into one case.

The original production of the albums was by Digital Sound LTD and Aalem en-Fan LTD, both Egyptian companies, who transferred the rights to the plaintiff. The logos and names of the Egyptian production companies appeared all over the compact disks and their packaging. In the original case as filed, the Egyptian production companies appeared as formal complainants, but the judge ruled that their names could be deleted from the statement of case since Amad Arabiyah Music Management and Distribution LTD had an exclusive license to distribute the compact disks and to sue for copyright infringement.

Amad Arabiyah Music Management and Distribution LTD sent a couple of investigators who purchased fraudulent disks in each shop and testified that the shops had stocks of such disks. They claimed 100,000 Shekels in statutory damages against each shop.

Amad Arabiyah Music Management and Distribution LTD considered that the full statutory damages should be awarded as the infringement was widespread knowing commercial infringement over a 35 year period that was profitable for the defendants. The shops considered the charges trivial and unsubstantiated and denied the standing of the plaintiff.

The court found the defendants guilty ruling that the recording company that produces music disks enjoys copyrights independently of the singers and composers. In this instance, the recording company transferred its rights to the plaintiff. The defendants sold copies of these compact disks from a company that was not authorized to distribute them, and so the disks are infringing copies. In the circumstances, the defendants knew or should have known that the disks infringed copyright, or at least should have made inquiries. Consequently an injunction was awarded against the defendants that requires them to destroy and forbids them from selling these compact disks. Each of the thirteen defendants has been fined 10,000 Shekels and has to pay 7500 Shekels in legal fees.

Civil Action 33968-05-11 Amad Arabiyah Music Management and Distribution LTD vs. Ahmed son of Mustafa Anbatawi et al., 13 Judge Atrash, 6 May 2015.             

COMMENT
I can see the sums awarded being appealed but the fact that there is infringement is clear. Although this particular proceeding relates to Egyptian music sold in Arab shops, I think that similar offenses occur in the Jewish sector, including Hassidic music traded in ultra-Orthodox areas. I am publishing this ruling in the hope that it will encourage others to enforce their rights and that those who do not see this as a kind of stealing because they are not sophisticated enough to understand the concept of rights in the abstract, should think again.


So Israel took his journey with all that he had, and came to Beersheba (Genesis 46)

April 14, 2015

park Carusso

Yesterday I enjoyed a pleasant trip down South to attend the WIPO Roving Seminar in Beer Sheva. The drive was pleasant. Negev is very verdant and the ornithology was good, with a lot of storks and black kites and the odd short-toed eagle in evidence. The event started at 9:30, and, with considerably less congestion getting into Beer Sheva than into Tel Aviv, I arrived at 9:15 am at the Carusso Science Park.

Moshe Lemberg, the Senior Program Officer at WIPO who organized the event introduced himself to me and hoped that I would blog about the refreshments. I thought this was a little surprising as the rogelach and burekas were fairly standard fayre but did make a welcome breakfast. Unfortunately however, the 3 litre hot water urn was inadequate to the task and I was unable to make myself a coffee. That had an adverse affect on my concentration during the first part of the program, and I noted that after Dr Daniel Ben Oliel presented the prize for Excelling Academic thesis in various fields of IP [sic] there were three or four competitors who presented brief talks on their papers for the Israel Patent Office Competition, but have no idea what they talked about. The chairs were too comfortable, I’d left home at 7 am and I was too far away from the screen. My neighbor kept nudging me. I suspect I was snoring a little. I went to the bathroom, washed my face and had a coffee (botz, using water from the now refilled urn), and went back in sitting closer to the front. This was a great improvement and I found the sessions interesting, stimulating and enjoyable.

Those wanting a review of the early sessions are respectfully referred to the IPKAT where the Doyen of IP Bloggers, Professor Jeremy Phillips has some insightful and relevant comments. See here.  For inciteful and irrelevant ones, read on!

Professor Phillips notes that there were 98 registrants. He was sitting in the back corner and was better situated to count heads than I was. I do try to keep tally on these events however, and did a head count on three occasions throughout the day. I noted 60 in the audience. With 5 rovers from WIPO and a large contingent from the patent office, this was less than impressive. I hope that the Haifa event on Tuesday is better attended, and as the program is largely the same, can highly recommend it.

PCT

PC Tea

PC Tea

Mr Matthew Bryan, the director of the PCT Legal Division gave a brief review of the PCT system and recent developments, and the amicable and helpful Dr Michael Bart who heads up the Israel Receiving Office spke about recent changes there. The local Beer Sheva (actually Omer – but who’se counting?) Mukhtar Patent Attorney, Dr Kfir Luzzatto joined Matthew and Michael, and gave some thoughts on the PCT, how Israel joining the system had affected the profession, and how he views International Search Reports from the Israel Patent Office.

Trademarks and Designs

Ms Debbie Roenning, Director of the Legal Division Madrid Register, Brands and Designs Section (BDS) spoke on Madrid system for trademark registration and then on the Hague system for Design Registration.  As well as showing which countries had signed up, she showed which countries were in the process of signing up which was useful. She also had some tips regarding tailoring goods for different jurisdictions, translating the list of goods into Hebrew, adding countries to an existing application and varying classes per country that were very informative.

Ms Anat Levi Sofer spoke briefly about trademarks and Madrid from the perspective of the Israel Patent Office and considered Israel joining Madrid a great success. Ms Ronit Bazik Sofer, head of trademarks at Reinhold Cohn represented the private sector and noted that she had been apprehensive of Israel joining Madrid and indeed, there had been a drop off in work since Israel joined, but with increased prosecution, things had evened out.

Knowing the official figures regarding trademarks filed directly into Israel and via Madrid, and Madrid marks originating in Israel, I think that both Ms Anat Levi Sofer and Ms Ronit Bazik Sofer were being less than objective. (Reinhold Cohn has too large a market segment for their practice not to follow the official statistics). Israel is very good at creating technology, but is less successful at launching international brands. Madrid has not been widely used by Israeli companies. It is possible that with additional prosecution resulting from more trademark applications designating Israel, workers in the trademark office and in private practice feel that they are busy. However, without the lucrative filing and with renewals handled centrally or by bucket shops, the revenues generated are lower that revenues once were. This is true of both patent office revenue and income to IP firms.

There was an opportunity to ask questions. In her first slide, Ms Roenning had shown various recent Israel trademarks filed by Israelis. The slide also included WIPO’s logo. It was tempting to ask why they had chosen what look’s like a roll of toilet paper, but I decided that it would unnecessarily cheapen the event.

Wipe-o

WIPE-O !

WIPO’s Arbitration and Mediation Center

Mr Matthew Bryan gave a presentation regarding WIPO’s arbitration and mediation services.  It was certainly worthwhile reminding those present that there are alternative methods of dispute resolution, and that going to court is not the only option.

Databases

Mr. Yoshiyuki Takagi spoke about WIPO’s databases such as WIPO Green and WIPO Re:Search. This brought some useful online tools to the attention of participants.

Lunch

ravioli

We were pleasantly surprised that WIPO / Patent Office had laid on a sumptuous buffet of ravioli, pizza, macaroni, cheese rolls, garlic bread, quiches, cheeses and salads. Had this been a couple of days after Shavuot (Pentacost) this may have seemed more of the same, but after a week of Pesach, noone passed over the opportunity to dine on hametz.

Copyright 

real life

Mr. Paolo Lanteri, the Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO spoke about the gaming industry. It seems that I was far from the only participant who wasn’t a gamer. I put this down to a combination of the audience being middle aged nerds.

It was fascinating to learn that the gaming industry is more significant financially than feature films and music combined. Happily people still read.

It seems that protecting IP in games is a complicated issue. The talk was very informative.

Questions were solicited and I made a case for moving over to registration of copyright and shorter periods of protection since I consider the system as broken. Jeremy Phillips took issue with my position and argued that most people in practice can do most of what they want and that the system does give redress for abuses. We continued arguing in the car back to Jerusalem.

Closing session

men in suits

The WIPO representatives and the Commissioner got on stage together as a panel. It was reassuring with INTA coming up, to note that my charcoal suit is apparently in fashion for IP events.

Dr Luzzatto took the opportunity to ask about Arab countries boycotting Israel, giving the example of Jordan that, despite a peace agreement, in practice the legal profession there won’t represent Israelis.

Mr Matthew Bryan first dodged the question by noting that Jordan was not a signatory to the PCT. As Kfir would not let things go at that, he rather sensibly pointed out that WIPO strongly condemns Arab countries discriminating against Israel, and writes strongly worded letters noting that such countries are not living up to their international obligations. He did, however, point out WIPO does not have enforcement police and their influence is very limited.

The Commissioner noted that Israel could theoretically refuse to allow applications originating from countries that don’t accept Israeli trademark or patent applications, but that the Israel Patent Office decided not to adopt this policy.

Retired US patent attorney Bruce Lilling noted that Taiwan, an important industrial nation was kicked out of the PCT mechanism at China’s request.

Recommendation

For those who missed the Beer Sheva event yesterday, I recommend trying to attend the largely parallel but slightly shorter program in Haifa tomorrow. See here.

Gratuitous Political Rambling Digression (its my blog so I can do what I like)

I note that Ms Debbie Roenning (who also wore a trouser suit, but not a tie) is the head of the Brands and Designs Section which shares the unfortunate acronym of BDS, the ‘Boycott, Divestment and Sanctions’ Movement, the allegedly pro Palestinian, but actually notoriously hypocritical and anti-Semitic international movement.

On the way to the conference, I noted Sodastream’s new factory in Beer Sheva. They moved from the Industrial Area by Maale Adumim (a satellite town of Jerusalem on the road towards Jericho) in response to vicious propaganda abroad. In the Maale Adumim factory, Sodastream provided jobs to West Bank Arabs and was a model of co-existence. Forced to relocate, the primary sufferers are the West Bank Arabs.
WIPO is one of the least anti-Israel organs of the UN. I think it might have been very worthwhile for them to have invited Jordanian, Palestinian and Egyptian IP professionals, both government and private, to the event. I am on good terms with professional colleagues in all these jurisdictions, and with others in Lebanon, Saudi Arabia and elsewhere, who read this blog, and chat amicably with me at INTA, AIPPI and other international conferences. Peace is made by trade.

Of course, Israel is not the only country to have been boycotted. To advance U.S. foreign policy and national security objectives, the U.S. maintains laws and regulations that impose economic sanctions against certain countries, individuals, and entities (the “U.S. Sanctions Program”).  31 C.F.R. § 501 et seq.  The Office of Foreign Asset Control (“OFAC”) at the Department of the Treasury manages the U.S. Sanctions Program.  The U.S. Sanctions Program prohibits U.S. nationals and U.S. companies from doing business in embargoed or sanctioned countries and from doing business with individuals or entities subject to U.S. sanctions laws and regulations.  At various times, the US has forbidden their nationals to register trademarks in Cuba and has also failed to uphold Cuban trademarks. Whether or not human rights are more mistreated by Castro’s regime in Cuba or by the US in the Guantanamo Bay prison camp is not clear.


Transferring A Contested Trademark to a Limited Company

November 19, 2014

pama

Abad Elrazak Abido is the owner of a registered trademark number 244831 for Pama, for shoes. He wishes to transfer ownership to a limited company: Pama Shoe Manufacturers LTD and to a partnership called Pama Porza, and submitted a request for transfer of ownership signed by him and the company.

This is actually the second attempt to transfer ownership, where the first attempt was dismissed on procedural grounds. Following that first attempt, an appeal was filed to the District Court. This appeal is pending, but meanwhile the owner has again submitted a request to transfer the mark and the present ruling relates to this request.

Section 48a of the Trademark Ordinance 1972 allows both pending and issued marks to be transferred from one owner to another, but gives the commissioner the right to refuse to register the transfer of ownership if it appears to be likely to confuse the public as to the origin of the goods or apparently contravenes the common good.

Puma S.E. opposed the transferring, arguing that the request had procedural flaws. In addition, they claim that the request is designed to create anonymity regarding the source of the shoes. The logic presumably being that the mark is being used to sell counterfeit shoes and Puma prefer to litigate against a person than a company as it is easier to collect if they win.

The Applicant submitted a Palestinian Authority trademark decision concerning a similar opposition, where registration of the mark Pama was allowed, and also submitted a certificate of incorporation, showing that the company to which the mark is to be transferred is properly incorporated in the Palestinian Authority (West Bank). The Applicant further claimed that there was a mediated settlement between him and Puma that allowed him to sell shoes under the PAMA brand in Israel and in the West Bank. The existence of the partnership remains a little cloudy.

Ms Shoshani Caspi ruled that the parties should submit affidavits and then attend a hearing where the relationship between Abad Elrazak Abido, the company and the ‘partnership’ could be clarified by cross-examination of the parties by the parties. Until such a hearing, she felt unable to address the issue of the public good. She noted that Mr Abido rights were not being compromised, as he would have the opportunity to provide additional documentation to substantiate his case. In the meantime, the request for transfer of ownership is suspended and no costs were-ruled.

COMMENT

Those with an interest in trademarks that are inspired by and somewhat similar to the marks of leading brands will note the four striped sneaker opposed by Adidas that was appealed to and upheld by the Supreme Court. Also of note is the Tigris decision which I am somewhat critical of, as it doesn’t relate to sports goods.

I have a working relationship with a Shechem (Nablus) based trademark lawyer which may help clients registering and enforcing in both the West Bank as well as in Israel. I suspect that proceedings are very different before the two regimes.


Yemen Allows Sun Natural to be registered as a trademark, despite an earlier mark for Shams

November 9, 2014

shams  sun naturals

Our Jordanian friends Qumsieh report that Arnet Pharmaceutical Corporation, filed a Yemen trademark application on 3 November 2012 for SUN Natural & Design in class five (5); the application was accepted and published in the Yemen Trademark Journal on 1 April 2013 subject to the opposition period of 3 months.

On 26 June 2013, a local company called “HAEL SAEED ANAAM AND CO” filed an opposition against the above trademark based on the following allegations:

  • SUN, the mark at issue is “Shams” in Arabic, which is a translation of its prior registration Shams in Latin and Arabic characters in Yemen;
  • Registration of the subject mark would  mislead the public of the origin of the products and would lead to unfair competition;
  • There would be a high possibility of confusing consumers between the two marks’ respective goods, and
  • Registration of the opposed mark would be against Yemeni Trademark Law and International Conventions.

A counterstatement in replying to the opposition was lodged as follows:

  • The marks are different in pronunciation and general appearance;
  • Our client’s trademark consists of distinctive elements of the word Naturals and the device. The other trademark consists of Arabic word Shams and its English transliteration, and
  • “SUN Naturals” has been used continuously in Yemen since 2007 without any conflicts.

The Committee found that the likelihood of confusion does not exist on the difference between SUN Naturals and Shams.

COMMENT

We note this ruling as it recalled a strange ruling by Judge Gronis, president of the Israel Supreme Court, that having registered trademarks for Shemesh for restaurants, did not provide a monopoly for the word Shemesh when applied to restaurants.