Chipsico – a Competing Marks Proceeding Where Both Marks were Refused

July 11, 2017

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

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

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

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


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 »


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 »


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 »


KANEX – Cancelling a Trademark and Posting a Bond to Cover Costs

October 31, 2016

KANEX is a trademark owned by Chen Writing Instruments Ltd. It covers “Staplers, paper-punches, staple-pins, lever arc mechanism and all other office requisites (other than furniture) all being articles of stationary included in class 16.

Kanin India (Pvt) Ltd. filed a cancellation proceedings under section 39 of the Trademark Ordinance 1972. Both sides have submitted their evidence but the hearing which is typically the next stage of cancellation proceedings has not yet occurred.

Now both sides have filed interim requests. Kanin India have requested permission to file supplementary evidence, and Chen Writing Instruments have requested that Kanin India post a bond to cover legal costs should Kanin lose the cancellation proceedings.

Filing Additional Evidence

The general course of cancellation proceedings is set out in the 1940 regulations. Kanin India’s request to submit additional evidence at this stage contravenes the general order of things.

The additional evidence includes two Israel court rulings:

  • 2430/98 Kangaroo Industries Regd. vs. Guard Writing Instruments (1995) LTD.  (30 July 2007)
  • 18116/02 Guard Writing Instruments (1995) LTD.  vs. Chen Writing Instruments LTD (11 Sep 2007).
  • Three affidavits from Ehud Berman, manager and owner of Guard Writing Instruments (1995) LTD. that are dated from 1998, 2004 and 2016.
  • Copies of letters from 1998 sent by Kanin India (Pvt) Ltd., which were attached to Mr Berman’s affidavit from 30 July 1998.
  • Copies of additional letters sent by Kanin India (Pvt) Ltd in 1999 that allegedly mention the trademark

The request to submit the additional evidence was supported by an affidavit signed by Adv. Rami Artman, Kanin India (Pvt) Ltd’s legal counsel, testifying that the evidence only reached him after he had made the original submission of evidence, and that he could not have obtained evidence that he was unaware about.

In the name of Kanin India (Pvt) Ltd., Adv Artman argued that the additional evidence is relevant to rights in the marks and due to their importance, their late submission should be allowed. As the hearing had not yet occurred, there was no reason not to allow their inclusion.

Chen Writing Instruments Ltd. argued that Adv Artman’s affidavit was insufficient and that the evidence was irrelevant to the cancellation proceeding. Furthermore, the evidence was known to the applicants of cancellation when the first round fo evidence was submitted, and since they did not present it at that stage, they were estoppled from submitting it at this later time. If this additional evidence is allowed, it will cause additional and significant expense to Chen Writing Instruments Ltd., and thus Chen Writing Instruments Ltd were entitled to compensation for this damage.

DISCUSSION

As a general rule, evidence is preferably submitted in one lot. (See 2813-07 Unipharm vs. Merck & Co Inc. Section 22 (30 January 2013); See also 579/90 Rozin vs. Bin-Nun p.d. 46(3) 738 (1992) section 8, and also Zusman Civil Evidence Procedures 1995 (509-510).

Nevertheless, the case-law provides considerations that justify later submissions of evidence, particularly the relevance of the submission and the importance of allowing substantive justice to occur. See 1297/011 Michaelovich vs. Clal Insurance ltd. p.d. 55 (4) 577 (2001) 579-580; the stage of the proceedings reached; could the party have brought the evidence at an earlier stage; why the evidence submitted earlier (see Rozin section 8), and whether the opposing party can explain away or contradict the further evidence (391/80 Leserson vs. Workers Residences Ltd. p.d. 38(2) 237 (1984) section 3).

In addition to these considerations, the Commissioner of trademarks has wide discretion to deviate from formal requirements and to accept additional evidence since Regulation 41 grants the Commissioner discretion to deviate from the procedures:

Neither side will add evidence in cases before the Commissioner, however the Commissioner may, at any time allow additional evidence to be submitted as he sits fit, and to adjust costs accordingly.

The commissioner may rely on any of the considerations that courts have allowed, but additionally, may rely on regulation 41 because of the public good inherent in the register. See, for example. competing marks 242735 and 24250 Razer (asia Pacific) PTE Ltd vs Razor USA LLC (14 October 2014), and cancellation proceeding 114996 Hosan Marketing (USA) Ltd vs. Nobel Fashion (1981) Ltd (24 April 2006).

It appears from Mr Berman’s affidavit from 1998, that the Application for cancellation is justified as there was inequitable behaviour in the filing of the Application. However, the way in which this evidence was submitted makes it problematic to allow its inclusion.

It appears from Mr Berman’s affidavit that only part of the evidence available was submitted by the Opposers, and no evidence was submitted as to why the rest of the evidence was not also mae available. The papers were filed in one submission without explanation or organization, and without an affidavit explaining the submission. True, the Agent for the Applicant submitted an affidavit explaining that he had only now learned about the evidence. However, the client did not submit an affidavit or statement explaining the significance of the evidence or why it was not submitted earlier. The commissioner is not convinced that he should accept evidence on the basis of the attorney’s submission. One has to allow the mark owner to cross-examine the challenger and the agent of record cannot represent his client if he himself is signed on an affidavit. this seems to contravene section 36 of the Rules of Ethics for Attorneys 1968 which allow the attorney to testify to technical procedural issues but not to substantive matters. See the request to cancel 187385 aned 187386 Gemological Institute of America and opposition to 200701 and 200702 Gemology Headquarters International (28 May 2012).

Although the commissioner has great flexibility and discretion to allow additional evidence to be submitted, he can also use this discretion to ignore evidence under Section 80 of the Regulations. In this instance, there is no apparent justification to allow late submission of evidence and the Applicant hasn’t even made a case to justify where such late submission should be allowed.

There is something in the trademark owner’s complaint that the additional evidence is being submitted late in the proceedings without due justification.

When weighing up the integrity fo the register against the additional work required to take into account mountains of evidence submitted without proper labeling in an appropriate manner and at an innappropriate stage, the Commissioner ruled that the District Court ruling and the Affidavits of Mr Berman may be submitted together with their appendices within 30 days. The additional material that was not submitted with an affidavit may not be submitted as the trademark owner cannot cross-examine on them.

The Request to Place a Bond for Costs

The mark holder has asked for the Applicant for cancellation to post a bond of not less than 100,000 Shekels to cover legal costs, expenses and damages should the cancellation action be rejected.  The Request is based on section 353a of the Company Law 1999 and section 519 of the Civil Law procedures 1984. Furthermore, the mark owner has requested that the proceedings be stayed until such a bond is posted.

The mark holder considers the request justified since the Applicant for cancellation is a foreign limited liability company (an Indian company) without assets in Israel. Furthermore, the Applicant has not filed any evidence of their financial state. The trademark owner contends that the Applicant is acting in bad faith, is making the proceeding unneccessary complicated by submitting late evidence with a low chance of prevailing, requiring them to post a bond is justified.

To support the request for a bond, an Affidavit from Mr Isaac Neiman, the CEO of the mark holder was submitted together with the request.

The Applicant for cancellation claims that the mark owner’s request to stay proceedings is simply  a ploy to allow them to continue using the mark whilst preventing the Applicant from importing products into Israel.

The Applicant considers the likelihood of the cancellation request being allowed as reasonable, and considers the size of the bond requested to be disproportionate and inappropriate for an Indian company.

Section 353a states:

If an Israeli or foreign limited company files a legal proceeding in an Israel Court, the court is allowed, at defendant’s request, to require the applicant to post a bond to cover legal expenses in the event of the action being dismissed, and can stay proceedings until such a bond is deposited, unless the court is convinced that the Applicant has the resources to pay its bills.

The parties do not disagree that the commissioner can request such a bond deposited. Such bonds have been placed from time to time, see Israel Trademark No. 242256 East and West Stores Ltd. vs. East and West Importers Ltd. (27 August 2012); The Mooi cases Densher vs. Mewah Brands  and Oui Gruppe GmbH & Co. vs. Mis El High Fashion (1992) Ltd. The guidelines for such cases are given in Appeal 10376/07 LN computerized engineering vs. Bank HaPoalim (2009) paragraph 13:

From that stated above, the court reviewing a request for bail to be posted by a plaintiff who is a company to ensure that costs are covered, should first of all consider the financial status of the applicant. This is the first clause in the law, but this does not stop here. If the court is not satisfied that the plaintiff can pay his fees should the defendant prevail, the court should consider whether placing bail is appropriate or not. This stage requires considering the legal rights of  the parties and the status of the parties. The general situation is that a bond is required, and a decision not to require one is an exception to the general state of affairs.

See Appeal 10905/07 Naot Oasis Hotels ltd/ et al. vs. Zisser (13 July 2007, 23 May 2011).

Furthermore, in LN Engineering it was ruled that one does not consider the likelihood of prevailing unless the case is very clear-cut.

In other words – if, for example, the chances of prevailing are high, it may be appropriate not to request a bond but there are two points: (a) the proof is on the plaintiff to show that their case is very good, and (b) it is generally inappropriate to enter a protracted analysis of the chances of prevailing and these should only be considered if they are very good or very poor.

Since the general position is that bonds should be required and the Applicant is a foreign limited company without Israeli assets, the Applicant has failed to to provide justification for NOT requiring them to post a bond. No evidence was submitted about the companies’ finances.

As to the specifics of the case, the onus is on the applicant to show that he should NOT place a bond, and in this instance, one notes that the Applicant made the strange move of late submission of evidence, and was also responsible for various delays and extensions at various stages. Nevertheless, at this stage, it does not seem appropriate to look into the merits of the case. In conclusion, the Applicant has not persuasively argued that they should not post bail.

In LN Engineering, it was ruled that bail should be proportionate to expected costs if the Applicant loses:

Once the second inquiry is concluded with a conclusion that the Applicant should indeed post bail, the third inquiry commences, to ascertain the appropriate bond that is proportionate and balances the various interests. Paragraph 13 here.

The mark holder has asked for a bond to be set at 100,000 Shekels, and notes that actual costs so far have been 50,000 Shekels, but one has to note the large additional submission of evidence that has now been made.

Consequently, the Applicant has to deposit a personal promissory note for the full amount requested within 30 days for the case to move forwards.

CONCLUSION

The District Court ruling and its appendices may be submitted. Mr Berman’s statement and its appendices may be submitted, but no further evidence will be allowed.

The Applicant will personally guarantee payment of costs of  100,000 Shekels should the cancellation proceedings prevail, and in consequence of this late submission, the applicant will pay 8000 Shekels legal fees within 30 days.

Interim Ruling by Asa Kling re cancellation of 130585 (KANEX), 28 September 2016.

COMMENT

This is a cancellation proceeding. There is nothing to stop the Applicant from filing a second cancellation proceeding immediately on this one being rejected.  No trademark is ever inviolate. It is therefore appropriate to review all the evidence available and to rule on substance not on formalities. It therefore seems clear that evidence should be allowed to be submitted at any stage. However, if the stage is not the correct one, costs should be awarded against the late submitter. Similarly, evidence submitted without a proper affidavit or in a format not acceptable, should be objected to, giving the submitter an opportunity to correct the defects, and awarding costs to the opposing party.